Joint Stock Company "Channel One Russia Worldwide" v. Russian TV Company Inc. et al

Filing 223

ORDER re: 220 Letter: For the reasons stated above, it is hereby ORDERED that the "category 1" emails be promptly produced to defendants, who may not use the information contained therein to shut down or disable Akbar Khan's accoun t. If any of the documents attached to the "category 2" emails have not yet been produced, they must now be promptly provided to defendants. The emails themselves, however, need not be produced. It is further ORDERED that the parties cooper ate in good faith to complete the deposition of Olga Panfilova no later than June 1, 2020, at which point all discovery will be concluded. In light of the ongoing COVID-19 pandemic, it is further ORDERED, pursuant to Fed. R. Civ. P. 30(b)(3) and (b)(4), that the Panfilova deposition may be taken via telephone, videoconference, or other remote means, and may be recorded by any reliable audio or audiovisual means. (Signed by Magistrate Judge Barbara C. Moses on 5/1/2020) (jwh)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

5/1/20

JOINT STOCK COMPANY "CHANNEL
ONE RUSSIA WORLDWIDE,"
Plaintiff,
-against-

18-CV-2318 (LGS) (BCM)
ORDER

RUSSIAN TV COMPANY INC., et al.,
Defendants.
BARBARA MOSES, United States Magistrate Judge.
Plaintiff Joint Stock Company "Channel One Russia Worldwide" (Channel One), a
Moscow-based television broadcaster, alleges that defendant Russian TV Company, Inc. (RTV),
a New York corporation owned by defendant Steven Rudik, has "pirated" its programming and is
selling it to subscribers in the United States, via internet protocol television (IPTV), without
authorization or license fees. See Second Amended Complaint (SAC) (Dkt. No. 189) ¶¶ 5, 46.
Discovery is nearly complete. One deposition remains to be taken: of Olga Panfilova, an
executive at Kartina Digital GmbH (Kartina), in Weisbaden, Germany. That deposition, in turn,
awaits the resolution of the parties' remaining privilege disputes, outlined in their joint letter
dated February 11, 2020 (Joint Ltr.) (Dkt. No. 220). This Order resolves those disputes.
Background
Kartina distributes Russian-language television programming throughout the world. It
was until recently "an authorized IPTV distributor of Channel One Programming" in the United
States, SAC ¶ 6, giving it a significant economic interest in combatting unlawful sales of
Channel One content in the United States. To that end, in July 2014, Kartina retained the law
firm Dunnington Bartholow & Miller LLP (Dunnington) to investigate the "piracy of Channel
One's programming in the United States" and to represent Channel One (and other Russian
broadcasters) in this and other actions against various alleged pirates. See Declaration of Olga

Panfilova dated October 11, 2019 (Panfilova Decl.) (Dkt. No. 191), ¶¶ 51-52. At least until late
2019, Kartina paid Dunnington's fees and directed its litigation strategy. Id. 1 Moreover, as
discussed in more detail below, Kartina has provided much of the evidence in this action
concerning defendants' alleged misconduct, either directly – through its own personnel, including
Panfilova – or indirectly, through the Dunnington personnel who have carried out various
investigatory activities at Kartina's behest. Thus, as the Court found on October 31, 2019,
although Kartina is "not formally a plaintiff here," it "effectively controls and directs this
litigation." Oct. 31 Tr. at 16:10-12. For that reason, and others, the Court granted defendants'
motion to compel the production of otherwise-discoverable Kartina documents in this action. See
id. at 12:22-20:8; Order dated Nov. 1, 2019 (Dkt. No. 202), ¶ 2.
Beginning in 2011, Kartina sold defendant Rudik "access codes" to its Russian language
IPTV "package," which included Channel One programming (the Kartina Package), for resale in
the United States. SAC ¶ 6; Verified Answer (Ans.) (Dkt. No. 199) ¶ 6; Panfilova Decl. ¶¶ 4-7.
In early 2017, Kartina "ended its relationship with Rudik" after he "secretly launched a
competitive service under the RTV brand," through which he undercut Kartina's prices.
Panfilova Decl. ¶¶ 15-22. Rudik was apparently permitted, however, to continue reselling the
access codes he had previously purchased, and defendants have interposed those sales as an
affirmative defense to Channel One's claims. See Ans. at 26 ("Plaintiff is barred in whole or in
part from recovering damages related to Defendants' alleged conduct to the extent Defendants

1

According to Panfilova, "Kartina has not distributed Channel One programming since July 31,
2019." Panfilova Decl. ¶ 49. On October 31, 2019, Channel One's lead counsel, Dunnington
partner Raymond J. Dowd, reported that although Kartina was still the firm's client, "my last bills
have gone to Channel One." Tr. of Oct. 31, 2019 Discovery Conf. (Oct. 31 Tr.) (Dkt. No. 203) at
11:17-12:10.

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received access to programming from providers licensed by Channel One, including, among
others, Kartina Digital GmbH.").
The parties dispute how much of RTV's business consists of lawful resales of previouslypurchased Kartina access codes, and how much consists of unlawful sales of "pirated"
programming for which defendants hold no license or sublicense. Compare, e.g., Def. Mem.
dated Sept. 20, 2019 (Dkt. No. 178), at 1 (asserting that RTV lawfully purchased "over $1.2
million in access codes from Kartina" and that those access codes "were responsible for a vast
majority of RTV's revenue between 2015 and 2018") with Pl. Mem. dated Oct. 11, 2019 (Dkt.
No. 193), at 15 ("Kartina estimates that Rudik made approximately $320,000 from the sale of
Kartina access codes, not $1.2 million."). Plaintiff's estimates are based, in large part, on
Panfilova's attestation that Kartina can "trace RTV's reselling of access codes" and the figures
she provides, in her declaration, for the number of access codes sold to Rudik that were
"activated by consumers" in 2016, 2017, and 2018. Panfilova Decl. ¶¶ 33-41. Consequently, I
ordered plaintiff and Kartina to produce "[a]ll documents and data concerning the investigations
described in ¶¶ 33-41 of the Declaration of Olga Panfilova dated October 11, 2019." Nov. 1
Order ¶ 2(c).
I also ordered plaintiff and Kartina to produce "[a]ll communications between
Dunnington, on the one hand, and Kartina and/or Channel One, on the other hand . . . concerning
any previously-disclosed investigation into the alleged misuse of Channel One's Programming,
copyrights, or trademarks by defendants." Nov. 1 Order ¶ 2(b). One of those "previouslydisclosed investigation[s]" was conducted by Dunnington associate Akbar Khan, who executed a
declaration describing what he observed in August 2019 when he logged into an "app" marketed

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by defendant RTV for use with a Samsung Smart TV. See Declaration of Akbar Khan dated
August 27, 2019 (Dkt. No. 163), ¶¶ 3-14.
On December 20, 2019, I authorized defendants to take Panfilova's deposition once the
parties' remaining disputes concerning the Channel One/Kartina document production were
resolved. (Dkt. No. 211.) On February 11, 2020, the parties filed their joint letter, explaining that
they continued to disagree over two categories of documents withheld as privileged: (1) emails
between Panfilova and Dunnington concerning a passcode needed by Khan to log into the
Samsung RTV app; and (2) emails between Panfilova and Dunnington "transmitting documents
and information that Panfilova relied on in her Declaration." Joint Ltr. at 2. Thereafter, in
accordance with my Order dated February 12, 2020 (Dkt. No. 221), plaintiff and Kartina
submitted five of the disputed documents for in camera review: (1) both of the challenged emails
regarding the passcode for Khan; and (2) three exemplar emails between Panfilova and
Dunnington. 2 In addition, Dunnington submitted a letter-brief dated February 19, 2020 (Pl. Ltr.)
(Dkt. No. 222), on behalf of both Channel One and Kartina, arguing that all of the disputed
documents are protected by the attorney-client privilege, the work product doctrine, and/or the
common interest privilege. Defendants had an opportunity to file their own letter-brief on the
same date but did not do so.
The Court has carefully reviewed the challenged documents in camera and has concluded
that only the emails regarding the passcode for Khan must be produced.

2

According to defendants, there are a total of eight documents in this category. Joint Ltr. at 2.

4

Category 1: Emails Regarding Passcodes
On August 7, 2019, at 9:28 a.m., Dunnington partner Dowd emailed Panfilova to request
"a new working RTVCO password for the US," explaining that Khan needed it to "collect
evidence." On August 8, 2019, at 3:14 a.m., Panfilova responded with a password. No other
subjects are discussed in the August 7 and 8, 2019 emails.
Plaintiff and Kartina do not seriously contend that these emails are privileged. Nor could
they. As this Court has repeatedly ruled, a party that chooses to use its litigation counsel to
perform factual investigations, and submits counsel's sworn testimony concerning those
investigations as evidence going to the merits, has waived any otherwise applicable privilege as
to the disclosed investigations. See Oct. 31 Tr. at 26:20-25 ("[O]nce you put the result out there,
once you say this is what I found or this is what I saw, work product has been waived with
respect to that investigation. And the opposing party is generally entitled to get the information
and documents it needs to understand what exactly was done."); see also Tr. of Dec. 19, 2019
Discovery Conf. (Dkt. No. 214) at 37:5-10 ("[W]ith respect to any investigation which has been
disclosed, that is, any investigation the results of which the plaintiff has used in this case, there is
no longer any underlying claim of attorney-client privilege or work product with respect to
whatever the documents are underlying that."); Joint Stock Co. Channel One Russia Worldwide
v. Infomir LLC, No. 16-CV-1318 (GBD) (BCM), 2019 WL 4727537, at *20 (S.D.N.Y. Sept. 26,
2019) (quoting United States v. Nobles, 422 U.S. 225, 239-40 (1975)) ("Respondent, by electing
to present the investigator as a witness, waived the privilege with respect to matters covered in
his testimony."), aff'd, 2020 WL 1479018 (S.D.N.Y. Mar. 26, 2020). Moreover, during the
October 31, 2019 conference, plaintiff's lead counsel specifically addressed the issue now

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presented, stating, "I think if Mr. Khan was provided with a password from Kartina, then I think
that's fair game." Id. at 27:1-2.
Instead, plaintiff argues that defendants do not "need" the two emails concerning an RTV
passcode for Khan (because they are "capable of replicating the results" through other means),
and that if defendants are given the passcode that Khan used, they may "shut down the account
associated with the passcode, inhibiting further investigation into Defendant's piracy." Pl. Ltr. at
3-4. Defendants' "need" for the emails is irrelevant to the question whether they must now be
produced. In the absence of any privilege, it is enough that the documents fall squarely within
¶ 2(b) of my November 1, 2019 Order. Plaintiff's concern about RTV shutting down Kahn's
account may be genuine, but is easily alleviated with an order prohibiting RTV from doing so.
Category 2: Emails Regarding Facts Discussed in the Panfilova Declaration
On August 1, 2019, at 3:46 p.m., Dunnington paralegal Christopher Vidulich sent an
email to Panfilova attaching screenshots of RTV's channel list. On August 2, 2019, at 5:08 a.m.,
Panfilova replied, informing Vidulich that certain channels offered by RTV were not part of the
Kartina Package. Two months later, in her October 11, 2019 declaration, Panfilova made a
similar point more generally, writing that "when Kartina learned of Rudik's violation of the
reseller agreement, Rudik was showing channels not included in the Kartina Package," Panfilova
Decl. ¶ 43, and therefore was not simply reselling Kartina access codes.
The screenshots attached to Vidulich's August 1 email are not privileged (as plaintiff
recognizes) and have apparently been produced. 3 Plaintiff is correct, however, that the emails
themselves, between Panfilova and Vidulich, are privileged attorney-client communications, as

3

According to plaintiff, all of "the documents underlying the Category 2 exemplars have been
produced," Pl. Ltr. at 2, including "the attachments to the emails." Id. at 3.

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to which the privilege has not been waived. Under federal common law – which governs
privilege issues in federal question cases, see Fed. R. Evid. 501, the elements of the attorneyclient privilege are well-settled:
The privilege applies only if (1) the asserted holder of the privilege is or sought to
become a client; (2) the person to whom the communication was made (a) is a
member of the bar of a court, or his subordinate and (b) in connection with this
communication is acting as a lawyer; (3) the communication relates to a fact of
which the attorney was informed (a) by his client (b) without the presence of
strangers (c) for the purpose of securing primarily either (i) an opinion on law or
(ii) legal services or (iii) assistance in some legal proceeding, and not (d) for the
purpose of committing a crime or tort; and (4) the privilege has been (a) claimed
and (b) not waived by the client.
United States v. United Shoe Mach. Corp., 89 F. Supp. 357, 358-59 (D. Mass. 1950). Accord
Obeid v. Mack, 2016 WL 7176653, at *3 (S.D.N.Y. Dec. 9, 2016); Gucci Am., Inc. v. Guess?,
Inc., 2011 WL 9375, at *1 (S.D.N.Y. Jan. 3, 2011); S.E.C. v. Beacon Hill Asset Mgmt. LLC, 231
F.R.D. 134, 138 (S.D.N.Y. 2004); Bank Brussels Lambert v. Credit Lyonnais (Suisse) S.A., 160
F.R.D. 437, 441 (S.D.N.Y. 1995) (all quoting United Shoe, 89 F. Supp. at 358-59). The privilege
"exists to protect not only the giving of professional advice to those who can act on it but also the
giving of information to the lawyer to enable him to give sound and informed advice." Upjohn
Co. v. United States, 449 U.S. 383, 390, 101 S. Ct. 677, 683 (1981); accord Hollis v. O'Driscoll,
2013 WL 2896860, at *2 (S.D.N.Y. June 11, 2013).
The August 1 and 2 emails between Kartina executive Panfilova and Vidulich – a
"subordinate" of Kartina's counsel – "relate to" facts (in this instance, facts concerning which
channels were part of the Kartina Package) communicated by the client to its counsel, in
confidence, for the purpose of securing assistance in this action. The facts themselves are not, of
course, privileged, see In re Grand Jury Subpoena Duces Tecum Dated Sept. 15, 1983, 731 F.2d
1032, 1037 (2d Cir. 1984) ("the attorney-client privilege protects communications rather than
information"), and "cannot be invested with privilege merely by communicating them to an
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attorney." Solomon v. Sci. Am., Inc., 125 F.R.D. 34, 37 (S.D.N.Y. 1988). Conversely, however,
"the confidentiality of the communication is not destroyed by disclosure of the underlying facts."
Id. Thus, the privilege protecting Panfilova's communications with counsel was not waived
simply because she discussed some of the same facts (or closely related facts) in her October 11,
2019 declaration. See, e.g., Hudson v. Gen. Dynamics Corp., 186 F.R.D. 271, 275-76 (D. Conn.
1999) (clients' responses to questionnaires prepared by their counsel remained privileged even
though the responses were "used in drafting of proffered affidavits"). As the Hudson court
explained, "the fact that [plaintiffs'] responses were used by their attorney to assist in drafting
their affidavits which they then individually signed under oath is not alone a use that should
waive the attorney client privilege, just as notes taken by counsel from a client's oral account
would not be discoverable simply because they were used to assist counsel in drafting an
affidavit thereafter." Id. at 276; see also Vodak v. City of Chicago, 2004 WL 783051, at *2 (N.D.
Ill. Jan. 16, 2004) (completed questionnaires by prospective clients were privileged); Hydraflow,
Inc. v. Enidine Inc., 145 F.R.D. 626, 635 (W.D.N.Y. 1993) (letter from client to attorney
containing "a detailed discussion of the key physical and operational elements of the snubber,"
which was "intended to assist counsel in preparing an application to the Patent Office"
incorporating those facts, was a "confidential communication" protected by the attorney-client
privilege both before and after the application was filed).
The same is true with respect to the remaining "category 2" exemplars. On August 22,
2019, at 5:53 a.m., Panfilova emailed Dowd – after reviewing a "list of Rudik's clients that Chis
[Vidulich] sent me" – and provided a series of comments and observations about what, in her

8

view, that list did and did not establish. 4 To illustrate her points, Panfilova attached various
documents, including screenshots and photographs showing the differences between the channels
offered by and the online interfaces provided by Kartina and RTV, respectively. At 5:35 p.m. on
August 22, 2019, Dowd emailed Khan, forwarding an earlier email, dated June 26, 2019, from
Panfilova to Dowd (with copies to other Dunnington and Kartina personnel), in which Panfilova
provided factual information concerning Kartina's access codes, the codes sold to Rudik, and
how the later use of those codes could be tracked by Kartina. She attached a printout showing,
among other things, when the various Kartina access codes sold to Rudik were activated.
Once again, while the attachments to these emails are not privileged, the emails
themselves are confidential communications between attorney and client that were properly
withheld from production. These communications did not lose the protection of the attorneyclient privilege merely because Panfilova later discussed some of the same facts in a declaration.
Solomon, 125 F.R.D. at 37. Were that the case, no client could safely discuss significant facts
with her attorney – much less work with that attorney to prepare a declaration asserting those
facts – for fear that the attorney-client privilege would be deemed waived once the declaration
was filed. See Hudson, 186 F.R.D. at 276 ("a finding that the plaintiffs have waived their
privilege merely by the fact that their questionnaire responses were used to draft the
plaintiffs' affidavits opens too wide a door on this important privilege"); United States v.
Gumbaytay, 276 F.R.D. 671, 680 n.9 (M.D. Ala. 2011) (fact that attorney used client interview
notes to prepare a publicly-filed form did not result in a waiver of the privilege protecting the
notes themselves; "[s]uch a ruling would, by extension, strip all client communications used to

4

The Court presumes that the "list of Rudik's clients" was a document produced in discovery by
defendants.

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draft an administrative or court complaint of their privileged status as soon as that complaint was
filed").
Conclusion
For the reasons stated above, it is hereby ORDERED that the "category 1" emails be
promptly produced to defendants, who may not use the information contained therein to shut
down or disable Akbar Khan's account. If any of the documents attached to the "category 2"
emails have not yet been produced, they must now be promptly provided to defendants. The
emails themselves, however, need not be produced.
It is further ORDERED that the parties cooperate in good faith to complete the deposition
of Olga Panfilova no later than June 1, 2020, at which point all discovery will be concluded. In
light of the ongoing COVID-19 pandemic, it is further ORDERED, pursuant to Fed. R. Civ. P.
30(b)(3) and (b)(4), that the Panfilova deposition may be taken via telephone, videoconference,
or other remote means, and may be recorded by any reliable audio or audiovisual means. 5
Dated: New York, New York
May 1, 2020
SO ORDERED.

________________________________
BARBARA MOSES
United States Magistrate Judge

5

This Order does not dispense with the requirements set forth in Fed. R. Civ. P. 30(b)(5),
including the requirement that, unless the parties stipulate otherwise, the deposition be
"conducted before an officer appointed or designated under Rule 28," and that the deponent be
placed under oath by that officer. For avoidance of doubt, a deposition will be deemed to have
been conducted "before" an officer so long as that officer attends the deposition via the same
remote means (e.g., telephone conference call or video conference) used to connect all other
remote participants, and so long as all participants (including the officer) can clearly hear and be
heard by all other participants.

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