IN RE NCAA STUDENT-ATHLETE NAME AND LIKENESS LICENSING LITIGATION

Filing 16

MEMORANDUM OPINION AND ORDER signed by MAG/JUDGE L. PATRICK AULD on 6/18/2012; that Plaintiffs' Motion to Compel Non-Party Atlantic Coast Conference to Produce Documents in Response to Subpoena Duces Tecum (Docket Entry 1 ) is GRANTED IN PART and DENIED IN PART in that the Court grants said Motion with respect to Request Nos. 1 and 2 as set forth in the above Order, but denies it in all other respects. (Sheets, Jamie)

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA

In re NCAA Student-Athlete
Name and Likeness Licensing
Litigation for the Northern
District of California

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)
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1:11MC63

MEMORANDUM OPINION AND ORDER
The instant matter comes before the Court for disposition of
Plaintiffs’ Motion to Compel Non-Party Atlantic Coast Conference to
Produce Documents in Response to Subpoena Duces Tecum (Docket Entry
1).

For the reasons that follow, the instant Motion will be

granted in part and denied in part.
Background
The action underlying the instant Motion to Compel is pending
in the United States District Court for the Northern District of
California.

(See Docket Entry 3 at 2.)

Plaintiffs, consisting of

former Division I college basketball and football players, are
pursuing claims on behalf of themselves and a class of all others
similarly situated against Defendants National Collegiate Athletic
Association (“NCAA”), Collegiate Licensing Company (“CLC”), and
Electronic Arts Inc. (“EA”) on the grounds that “the NCAA, its
member schools and conferences, and various co-conspirators have
violated the federal antitrust laws by conspiring to foreclose
Plaintiffs

and

class

members

from

receiving

compensation

in

connection with the commercial exploitation of their names, images,

and/or likenesses following their college playing days.”

(Id. at

2-3.)
During the course of merits discovery, Plaintiffs served
subpoenas on various nonparties, including the Atlantic Coast
Conference (the “ACC”).

(See id. at 3.)

The original subpoena

served on the ACC requested thirty-five categories of documents.
(See Docket Entry 3-15.)

The ACC objected to that subpoena on the

grounds that “it [was] onerous, overly broad, unduly burdensome,
and without limitation as to time or scope in violation of Rules 26
and 45 of the Federal Rules of Civil Procedure.”

(Docket Entry 3-

16 at 2.) As a result of subsequent discussions between Plaintiffs
and the ACC, Plaintiffs narrowed the thirty-five categories in
their original subpoena to eleven.

(See Docket Entry 3-17.)

Contending that the ACC nonetheless has failed to produce a single
responsive document, Plaintiffs now move this Court to “enter an
order compelling non-party [the ACC] to produce all documents
responsive to Plaintiffs’ properly served subpoena duces tecum.”
(Docket Entry 1 at 1.)

Plaintiffs also seek an Order of Contempt

“obligating the ACC to pay Plaintiffs’ expenses incurred in making
this [M]otion, including attorneys’ fees, pursuant to Fed. R. Civ.
P. 45(e), 37(a)(5), and 37(c)(1).”

(Docket Entry 3 at 2.)

Of note, Plaintiffs served a nearly identical subpoena on the
Big Ten Conference (the “Big Ten”), also consisting of eleven
categories of requested documents.

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(See Docket Entry 12-1.)

Like

the ACC, the Big Ten objected to Plaintiffs’ subpoena.

(See id.)

Plaintiffs brought a Motion to Compel in the United States District
Court for the North District of California (the “Big Ten Motion to
Compel”). (See id.) That court denied said Motion and found “that
although [Plaintiffs’] document requests call for some documents
relevant

to

the

claims

or

defenses

in

this

action,

their

substantially overly broad scope would subject the nonparties to
significant

expense

and

undue

burden

if

the

nonparties

compelled to respond to them in their current form.”

were

(Id. at 2.)

In making this determination, the court noted that “the time-frame
for the documents requested is overly broad and not tailored to
discover relevant documents.”

(Id. at 7.)

The court proceeded to

provide specific reasons for denying each of the Requests.
id. at 8-15.)

(See

Finally, the court held that “sanctions against

[Plaintiffs] are appropriate under Rule 45, as [Plaintiffs] failed
to take reasonable steps to avoid imposing an undue burden on the
nonparties.”

(Id. at 16.)1

With this information in mind, the undersigned turns to an
analysis of each of the eleven categories in Plaintiffs’ narrowed
request.

1

Plaintiffs objected to the above-referenced order, but it
was upheld. (See Docket Entry 15-1.)
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Standard
Federal Rule of Civil Procedure 45 governs subpoenas issued to
nonparties and permits the same scope of discovery as provided for
under Federal Rule of Civil Procedure 26.

See Kinetic Concepts,

Inc. v. ConvaTec Inc., 268 F.R.D. 226, 240 (M.D.N.C. 2010) (citing
Fed. R. Civ. P. 26 advisory committee’s notes, 1991 Amendment,
Subdivision (a)).

Rule 26 allows for the discovery of “any

nonprivileged matter that is relevant to any party’s claim or
defense.”

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

“Relevant information need

not be admissible at the trial if the discovery appears reasonably
calculated to lead to the discovery of admissible evidence.”

Id.

Moreover, the Court must limit the frequency or extent of
discovery if it determines that:
(i) the discovery sought is unreasonably cumulative or
duplicative, or can be obtained from some other source
that is more convenient, less burdensome, or less
expensive;
(ii) the party seeking discovery has had ample
opportunity to obtain the information by discovery in the
action; or
(iii) the burden or expense of the proposed discovery
outweighs its likely benefit, considering the needs of
the case, the amount in controversy, the parties’
resources, the importance of the issues at stake in the
action, and the importance of the discovery in resolving
the issues.
Fed. R. Civ. P. 26(b)(2)(C).
Accordingly, when conducting an analysis under Rule 45, the
Court “is required to apply the balancing standards: relevance,

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need, confidentiality and harm.

Even if the information sought is

relevant, discovery is not allowed where no need is shown, or where
compliance is unduly burdensome, or where the potential harm caused
by production outweighs the benefit.” Insulate Am. v. Masco Corp.,
227 F.R.D. 427, 432 (W.D.N.C. 2005).
Discussion
As an initial matter, the Court notes that the email sent by
Plaintiffs narrowing their subpoena request from thirty-five to
eleven categories states: “The time frame for these document
requests is from January 1, 2002 to the present, unless otherwise
indicated below.”

(Docket Entry 3-17 at 1.)

This Court agrees

with the court for the Northern District of California that
“[P]laintiffs

have

provided

no

sufficient

justification

for

requesting documents that cover a ten-[]year period” (Docket Entry
12-1 at 7).

Such a broad time period weighs against granting the

instant Motion, as further discussed below where applicable in the
analysis of each of the eleven category requests.
Request No. 1
1. Any handbooks and/or manuals relating to participation
in college athletics, including athletic codes of
conduct.
The ACC has agreed to provide copies of its conference manuals
for the last two years.

(See Docket Entry 7 at 4-5.)

Plaintiffs,

however, seek all handbooks and manuals from 2002 forward, and
contend that “[t]hese [m]anuals contain the rules and regulations

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that govern student-athletes’ participation in ACC athletics,
including rules relating to amateurism and compliance with NCAA
rules.”

(Docket Entry 10 at 9.)

Because Plaintiffs have made some showing of relevance, the
ACC has already produced manuals related to the two prior years and
because the Court sees minimal burden in requiring the ACC to
produce this discrete category of documents from 2002 forward, the
Court will grant Plaintiffs’ Motion with respect to Request No. 1.2
Request Nos. 2, 3, 4 and 5
2. Any television or broadcast contracts affecting or
concerning men’s Division I basketball or Division I
football.
3. Any Licensing Agreements with major entities
including, but not limited to, Collegiate Images, Thought
Equity Motion, CLC, and Electronic Arts. Minor, local
promotions with entities other than those described above
need not be produced.
4. Any contracts with outside licensing entities. If the
ACC has not sued any outside licensing entities, please
produce all documents containing revenue information for
products sold containing footage/photographs.
5. Any documents, including, but not limited to, reports
relating to the Licensing Agreements described above.

2

In the Big Ten Motion to Compel, the Big Ten contended the
conference handbooks were publicly available, and the court for the
Northern District of California denied Plaintiffs’ Request No. 1
partly on the grounds that “it appears that [] [P]laintiffs have
access to at least some responsive materials through a less
burdensome source within the meaning of Rule 26(b)(2)(c).” (Docket
Entry 12-1 at 8.)
The ACC has made no similar showing of the
availability of its handbooks or manuals through a less burdensome
source in this case. (See Docket Entry 7.)
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The ACC contends that Request No. 2 is irrelevant to the
underlying action.

(Docket Entry 7 at 5.)

Specifically, the ACC

notes: “The NCAA has its own television agreements, and neither it
nor any other defendant was a party to the ACC’s television
agreements, was involved in the negotiation of the agreements,
received copies of the agreements, was privy to the details of or
had

input

into

the

agreements,

had

ever

seen

copies

of

the

agreements, or received any revenues or other benefits from the
agreements.”

(Id.)

With respect to Request Nos. 3, 4 and 5, the ACC states that
“Plaintiffs’ counsel advised counsel for the ACC that Plaintiffs
are not seeking copies of any licensing agreements for the use of
the ACC name, ACC logo/seal, or registered [ACC] trademarks or
service marks, but instead are seeking copies of any licensing
agreements for the use of any student-athlete names, likenesses, or
images.”

(Docket Entry 7 at 9.)

In this regard, the ACC contends:

[T]he ACC has not had any licensing agreements of any
nature with EA Sports or CLC for the use of studentathlete names, likenesses, or images. The ACC recently
entered a licensing agreement with CLC, but only for the
use of the ACC name, logo/seal, and registered [ACC]
trademarks and service marks. It does not authorize the
use of student-athlete names, likenesses, or images.
Until the recent agreement with CLC, the ACC has had a
single exclusive licensing agreements that has been
limited to the use of the ACC and [ACC] trademarks and
service marks.
As such, there are no responsive
documents to produce for these requests.
(Id. (underlining in original).)

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Plaintiffs assert that “[t]he ACC is an alleged co-conspirator
and a major force within the NCAA,” and that “the broadcast and
licensing

agreements

entered

between

the

ACC

and

television

networks and licensing entities convey rights to utilize student
athletes’ name [sic], image [sic], and likeness [sic], and are the
mechanisms

by

which

the

illegal

conspiracy

is

carried

out.”

(Docket Entry 10 at 3.)
In this instance, the Court finds the resolution of this issue
by the court in the Northern District of California instructive.
In that action, the court found that “[t]he agreements responsive
to th[ese] [R]equests are at least marginally relevant to the
claims of [] [P]laintiffs, because they concern the for-profit use
of the images, likenesses, or names of student-athletes in products
or media, which, according to the operative complaint, include
television contracts, rebroadcasts of classic games, DVD game and
highlight film sales and rentals, on-demand streaming and sales of
games and clips, and stock footage sales to corporate advertisers
and others.”

(Docket Entry 12-1 at 10 (internal quotation marks

and citation omitted).)

However, the court also recognized that

“the

.

document

requests

.

.

call

for

highly

confidential

commercial information from the nonparties and are not tailored to
minimize the potential prejudice that the nonparties could suffer
by releasing such information.”

(Id.)

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Accordingly, the court designed a compromise requiring the Big
Ten to produce “any television broadcast and licensing agreements
to which [it] [is] [a party] concerning NCAA Division I football or
basketball, as well as any nonprivileged documents concerning the
negotiation of any contract provisions that mention the studentathletes’ right of publicity, names, images, or likenesses.”
at 9.)

(Id.

The court expected such excerpts to contain “contract

provisions that mention student-athletes’ right of publicity,
names, images, or likenesses, as well as identifying information
concerning the parties to the agreements and whether the agreements
relate to NCAA Division I football or basketball.” (Id.) Morever,
the Big Ten was to “provide a summary of the distribution rights
conveyed by each agreement produced.”
This Court will order the same.

(Id.)
As the documents sought are

at least partially relevant to Plaintiffs’ claims in the underlying
action (sufficient to overcome the burden demonstrated by the ACC),
the instant Motion will be granted in part with respect to these
Requests in that the Court will order the ACC to produce documents
responsive to said Requests in line with the compromise fashioned
by the court for the Northern District of California.
Plaintiffs, however, have failed to provide the Court with any
reason to doubt the ACC’s assertion that it does not have documents
responsive to Request Nos. 3, 4 and 5.

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If said assertion remains

true in light of the compromise ordered by the Court, the ACC need
not take any further action with respect to those Requests.
Request No. 6
6. Any specific documents relating to or addressing the
question of the rights to continue to license, use, or
sell all products containing images of former student
athletes, including, but not limited to, any name, image,
or likeness release or consent forms used or administered
by the conference. (We do not want the signed Forms 083(a), only exemplars).
In its Response, the ACC has indicated that “counsel for the
ACC has sought and received a voluntary production of exemplar
forms from the ACC’s member institutions and thus the ACC will
produce copies of the exemplars that its member institutions
voluntarily provided.”

(Docket Entry 7 at 10.)

The ACC further

notes that “Plaintiffs have indicated that this [production] will
satisfy their Request No. 6.”

(Id.)

As Plaintiffs have not

addressed this Request further in their Reply (see Docket Entry
10), additional discussion of this item is unnecessary.
Request Nos. 7, 10 and 11
7. Any documents relating to policies regarding
copyright, ownership and/or licensing of products
utilizing or incorporating the name, image, or likeness
of Student Athletes, including, but not limited to,
footage and photos.
10. Any documents relating to attendance at any trade
association or industry association meeting where the
rights in or ownership of Student Athletes’ photos or
footage was discussed, including, but not limited to,
meetings of the (a) National Association of Collegiate
Directors of Athletics; (b) International Collegiate
Licensing Association; (c) National Association of

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Collegiate Marketing Administrators; and (d) College
Athletic Business Management Association.
11. Documents generated within the last two years and
that relate to potential changes to the collegiate model,
competitive balance issues, commercialism debates
including related to NCAA Legislative Proposal 2010-26,
or increased player benefits such as covering the full
cost of attendance.
These documents should include
materials pertaining to NCAA President Emmert’s August
“Presidential
Retreat.”
See,
e.g.,
http://www.ncaa.com/news/ncaa/2011-07-19/ga-emmertpresidential-retreat.
With respect to Request Nos. 7, 10 and 11, the ACC again
states

that

Requests.

it

does

not

have

documents

responsive

to

those

(See Docket Entry 7 at 10 (“The ACC is unaware of any

documents responsive to this Request.

Nonetheless, the ACC has

agreed to produce its manual, which includes, among other things,
its

Constitution,

Bylaws

and

various

policies.”);

id.

at

12

(“Counsel for the ACC agreed to investigate with the ACC whether
any of its staff had received documents requested at trade/industry
association

meetings

of

the

type

listed.

After

further

investigation, the ACC does not possess any documents responsive to
this request.”); id. at 13 (“The ACC does not possess any documents
responsive to this Request other than the form legislation of
Proposal 2010-26 which is available from the NCAA.

The ACC,

nonetheless, will produce information regarding the votes of its
members that it conveyed regarding this legislative proposal.”).)
In their Reply, Plaintiffs argue that “[i]t seems impossible
that the ACC has no documents responsive to these requests.

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Rather, this more likely reveals the insufficiency of the ACC’s
search for documents.”

(Docket Entry 10 at 9.)

Plaintiffs go on

to state: “For example, Plaintiffs have received productions from
other conferences that include communications to which the ACC is
a party that are responsive to Plaintiffs’ request relating to
policies and trade association meeting agendas at which the ACC was
present and issues relating to the litigation were discussed.”
(Id. at 9 n.12.)

Plaintiffs, however, have not provided the Court

with the communications to which they refer.

(See id.)

The Court is left without a sufficient basis to discredit the
ACC’s assertion that it lacks documents responsive to the Requests,
and the Court cannot compel the ACC to produce something which it
does not have.
broad.

Moreover, the Court finds these Requests overly

Plaintiffs have failed to show that the relevance of these

documents to the underlying action outweighs the burden on the ACC
of

producing

responsive

documents

covering

a

ten-year

span.

Accordingly, the Court will deny the instant Motion with respect to
Request Nos. 7, 10 and 11.
Request No. 8
8. Documents relating to EA Sports games, including, but
not limited to, any materials or information provided by
the ACC to EA (footage, broadcasts, player bios and
stats, consents or licenses from players) and information
on payments by EA to the ACC.
As to this Request, the ACC stated: “[T]he ACC has not had any
agreements with EA Sports.

Additionally, the ACC does not provide

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material to EA Sports and has not received payments from EA Sports.
On information and belief, if EA Sports has requested or received
any information from any individual school, such as a game program
or press guide, that is a request that would have been handled
directly between EA Sports and the individual school.”
Entry 7 at 11.)

(Docket

Plaintiffs’ Reply asserts only that “[d]ocuments

related to Defendant EA Sports are central to the parties’ claims
and defenses. . . .

In addition to materials provided to or

received from EA, several conferences have also produced internal
documents that discuss the use of student-athlete name, image, and
likeness in EA Games, as well as financial reports reflecting
payments related to EA Games.”

(Docket Entry 10 at 10.)

Again, the Court lacks a basis to reject the ACC’s assertion
that it does not possess documents responsive to this Request.
Moreover, as the court in the Northern District of California found
regarding an analogous request, the instant Request “is overly
broad, and . . . [Plaintiffs] have not articulated sufficient
limitations based on the discovery they have obtained from other
sources to reduce the burden on the nonparties of searching for
responsive documents.”

(Docket Entry 12-1 at 13.)

Accordingly,

the undersigned will deny the instant Motion with respect to
Request No. 8.
Request No. 9
9. Any documents referencing or referring to the present
litigation, also known as the O’Bannon and/or Keller
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litigation, including, but not limited to, documents
relating to or referring to Plaintiffs’ subpoenas served
on third parties, including the ACC.
In connection with this Request, the ACC provided as follows:
“The

ACC

has

asserted

a

common

interest

privilege

with

the

television/broadcast entities with which it had contracts and a
common interest privilege/joint defense agreement with the NCAA and
other conferences to the extent that the various conferences are
member entities of the NCAA and to the extent that, during the
pendency of the non-party subpoenas, Plaintiffs have accused the
conferences

of

being

(Docket Entry 7 at 12.)

unnamed

co-conspirators

with

the

NCAA.”

Moreover, the ACC “objected to providing

a detailed privilege log specifying every communication between
defense counsel as such privileged communications regarding the
[l]itigation or regarding the subpoenas at issue are, at best, of
remote relevance to Plaintiffs’ claims in the [l]itigation and the
preparation of a detailed privilege log . . . would be unduly
burdensome under Rule 45 and does not seem appropriate under the
circumstances.”

(Id.)

Although the ACC provided a “summary log,” Plaintiffs assert
that they “are unable to determine from this deficient log whether
the common interest exception to attorney-client privilege applies”
(Docket Entry 10 at 10) and contend that “[a]ny documents withheld
on the basis of a supposed-privilege must be adequately identified
in a privilege log, which sets forth ‘every responsive document

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withheld,

the

specific

privilege

it

contends

applies,

and

a

description of the documents, communications, or tangible things
not produced or disclosed to Plaintiff[s]’” (id. at 11 (quoting
Miller v. Lincoln Fin. Grp., No. 1:10cv283, 2011 WL 4595803, at *2
(W.D.N.C. Oct. 3, 2011) (unpublished))).
This

issue

was

addressed

in

the

Northern

District

of

California court’s ruling on the Big Ten Motion to Compel. In that
matter, the Big Ten claimed “that it ha[d] no nonprivileged
documents responsive to this [R]equest and that it should not be
required

to

create

a

privilege

log

because

the

privileged

communications are protected by the joint defense privilege or
common interest rule.”

(Docket Entry 12-1 at 14.)

The court

determined that “this document [R]equest is overly broad and that
[] [P]laintiffs have failed to show that the documents responsive
to it are relevant to the claims or defenses in this action.”
(Id.) The undersigned finds the same. Compelling nonparty the ACC
to produce a full privilege log under the facts of this action
would be unduly burdensome.

Moreover, Plaintiffs have failed to

show that the relevance of the documents, or need, would outweigh
that burden.

Accordingly, the Court will deny the instant Motion

with respect to Request No. 9.
Sanctions
Plaintiffs move for an Order of Contempt “obligating the ACC
to pay Plaintiffs’ expenses incurred in making this [M]otion,

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including attorneys’ fees, pursuant to Fed. R. Civ. P. 45(e),
37(a)(5), and 37(c)(1).”

(Docket Entry 3 at 1.)

Initially, the

Court notes that Rule 37 does not apply in this situation.

Of the

provisions of Rule 37 cited by Plaintiffs, Rule 37(a)(5) mandates
that

the

Court

require

a

party

or

deponent

whose

conduct

necessitated a motion to compel to pay the movant’s reasonable
expenses and Rule 37(c)(1) addresses the repercussions when a party
fails to provide information or identify a witness.

Neither

addresses the failure of a nonparty to properly comply with a
subpoena.

In other words, “Rule 37 does not authorize an award of

expenses for a motion to compel nonparties to produce documents.
. . .

The only authority for the imposition of sanctions against

a nonparty for failure to comply with a subpoena is Rule 45(e).”
Warkentin v. Federated Life Ins. Co., No. 1:10cv0221 DLB, 2012 WL
113745, at *2 (E.D. Cal. Jan. 13, 2012) (unpublished) (internal
citations omitted).
Rule 45(e) authorizes the Court to “hold in contempt a person
who, having been served, fails without adequate excuse to obey the
subpoena.”

Given the largely overbroad and unduly burdensome

categories of documents requested by Plaintiffs, the ACC’s status
as a nonparty, and the ACC’s attempts at reaching compromise, the
Court finds no basis to hold the ACC in contempt.

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Conclusion
The Court lacks any ground to reject the ACC’s assertions that
it does not have documents responsive to Request Nos. 3, 4, 5, 7,
8, 10 or 11 and, accordingly, the Court will not compel the ACC to
comply with those Requests.

With respect to Request No. 1, given

the showing of relevance and the minimal burden on the ACC in
complying in full, the Court will grant Plaintiffs’ instant Motion.
Furthermore, the Court finds the compromise adopted by the court in
the Northern District of California with respect to Request No. 2
appropriate and will order the ACC to comply likewise.

However,

with respect to Request No. 9, the Court deems said Request overly
broad and unduly burdensome and will deny Plaintiffs’ instant
Motion.

No dispute appears to exist as to Request No. 6.

Finally,

the Court finds sanctions under Rule 37 unauthorized and contempt
under Rule 45(e) inappropriate under the circumstances of this
case.
IT IS THEREFORE ORDERED that Plaintiffs’ Motion to Compel NonParty Atlantic Coast Conference to Produce Documents in Response to
Subpoena Duces Tecum (Docket Entry 1) is GRANTED IN PART and DENIED
IN PART in that the Court grants said Motion with respect to

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Request Nos. 1 and 2 as set forth in the above Order, but denies it
in all other respects.
/s/ L. Patrick Auld
L. Patrick Auld
United States Magistrate Judge
June 18, 2012

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