Oppenheimer v. Williams et al

Filing 34

ORDER granting in part and denying in part 25 Motion to Compel Signed by Honorable David C Norton on 9/8/2021.(nhaj, )

2:20-cv-04219-DCN

Date Filed 09/08/21

Entry Number 34

Page 1 of 13

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF SOUTH CAROLINA
CHARLESTON DIVISION
DAVID OPPENHEIMER,

)
)
Plaintiff,
)
)
vs.
)
)
DAVID DRUAND WILLIAMS; ASHLEY
)
RIVER PROPERTIES, II, LLC d/b/a RIPLEY )
LIGHT YACHT CLUB; KRITI RIPLEY, LLC; )
KELLEY POE; and JOHN DOE,
)
)
Defendants.
)
_______________________________________)

No. 2:20-cv-4219-DCN
ORDER

The following matter is before the court on defendants David Druand Williams;
Ashley River Properties, II, LLC; Kriti Ripley, LLC; Kelley Poe; and “John Doe,”
unidentified individual or entity’s (collectively, “defendants”) motion to compel, ECF
No. 25. For the reasons set forth below, the court grants in part and denies in part the
motion.
I. BACKGROUND
Defendants are the owners and/or operators of Ripley Light Marina, a small
private marina located on an inlet of the Ashley River in Charleston, South Carolina.
Plaintiff David Oppenheimer (“Oppenheimer”) is a professional photographer and, it
seems, professional litigant. In 2014, Oppenheimer captured aerial photographs of the
Ripley Light Marina and the inlet on which it sits, a feat which Oppenheimer claims he
accomplished by leaning out of the rear of a doorless helicopter. Shortly after capturing
the photographs, Oppenheimer registered them with the United States Copyright Office.
Oppenheimer claims that on December 12, 2017, he discovered that defendants were

1

2:20-cv-04219-DCN

Date Filed 09/08/21

Entry Number 34

Page 2 of 13

displaying his photographs online to promote Ripley Light Marina’s business. According
to Oppenheimer, after contacting defendants in September 2019, he also learned that they
were displaying his work on their business cards.
On December 6, 2020, Oppenheimer filed this action against defendants, asserting
claims under the Copyright Act, 17 U.S.C. §§ 101 et seq., and the Digital Millennium
Copyright Act, 17 U.S.C. §§ 1201 et seq. ECF No. 1, Compl. As defendants point out,
this is not Oppenheimer’s first foray into copyright litigation. Oppenheimer has filed at
least 128 copyright lawsuits around the country, ECF No. 25-7 at 4–10, including
eighteen in this district, ECF No. 25-1 at 2 n.1. On July 1, 2021, defendants filed a
motion to compel, seeking discovery responses related to Oppenheimer’s previous claims
of copyright infringement and his request for attorneys’ fees. ECF No. 25. On July 15,
2021, Oppenheimer filed a response. ECF No. 27. On July 22, 2021, defendants filed a
reply, ECF No. 29. The court held a hearing on the motion on August 30, 2021. As
such, it is ripe for the court’s review.
II. STANDARD
Federal Rule of Civil Procedure 26 provides that, unless otherwise limited by
court order,
[p]arties may obtain discovery regarding any non-privileged matter that is
relevant to any party’s claim or defense and proportional to the needs of the
case, considering the importance of the issues at stake in the action, the
amount in controversy, the parties’ relative access to relevant information,
the parties’ resources, the importance of the discovery in resolving the
issues, and whether the burden of expense of the proposed discovery
outweighs its likely benefit.
Fed. R. Civ. P. 26(b)(1). Notably, “[i]nformation within this scope of discovery need not
be admissible in evidence to be discoverable.” Id. “The scope and conduct of discovery

2

2:20-cv-04219-DCN

Date Filed 09/08/21

Entry Number 34

Page 3 of 13

are within the sound discretion of the district court.” Columbus–Am. Discovery Grp. v.
Atl. Mut. Ins. Co., 56 F.3d 556, 568 n.16 (4th Cir. 1995) (citing Erdmann v. Preferred
Research, Inc. of Ga., 852 F.2d 788, 792 (4th Cir. 1988)); see also U.S. ex rel. Becker v.
Westinghouse Savannah River Co., 305 F.3d 284, 290 (4th Cir. 2002) (stating that district
courts are afforded “substantial discretion . . . in managing discovery”).
If a party declines to comply with a discovery request, the serving party “may
move for an order compelling an answer, designation, production, or inspection.” Fed. R.
Civ. P. 37(a)(3)(B). An evasive or incomplete disclosure, answer, or response, “must be
treated as a failure to disclose, answer or respond.” Fed. R. Civ. P. 37(a)(4). District
courts have “wide latitude in controlling discovery and [their] rulings will not be
overturned absent a showing of clear abuse of discretion.” Ardrey v. United Parcel
Service, 798 F.2d 679, 683 (4th Cir. 1986); In re MI Windows & Doors, Inc. Prod. Liab.
Litig., 2013 WL 268206, at *1 (D.S.C. Jan. 24, 2013).
III. DISCUSSION
Defendants’ motion asks the court to compel Oppenheimer’s responses to several
of their interrogatories and requests for production. Specifically, defendants seek to
compel responses to Requests for Production Nos. 12–16 and Interrogatories Nos. 2, 4, 5,
and 7, which seek documents and information concerning Oppenheimer’s litigation
history as well as his earnings from his photography business. See ECF No. 25-3.
Defendants also ask the court to compel Oppenheimer to respond to Request for
Production No. 9, which seeks information relevant to Oppenheimer’s claim for
attorneys’ fees. See id. Further, defendants complain that Oppenheimer’s privilege log is
untimely and otherwise deficient and therefore ask that the court deem Oppenheimer’s

3

2:20-cv-04219-DCN

Date Filed 09/08/21

Entry Number 34

Page 4 of 13

claims of privilege waived or, alternatively, order Oppenheimer to reform his privilege
log. The court addresses each request in turn, ultimately granting defendants’ motion in
substantial part but narrowing the relevant discovery requests in scope.1
A. Oppenheimer’s Litigation History and Business Earnings
Defendants seek documents and information related to Oppenheimer’s history of
asserting copyright infringement claims, as well as documents and information
concerning the income he has earned from his photography business. Oppenheimer first
objects to the request as irrelevant. But there can be no doubt that the income

1

Defendants initially argue that the court should grant their motion because
Oppenheimer’s objections to the relevant discovery requests constitute “generalized,
nonspecific boilerplate objections.” ECF No. 25-1 at 4. It is well-settled in this district,
like in many others, that boilerplate objections are “meaningless” and should be deemed
“meritless.” Curtis v. Time Warner Ent.-Advance/Newhouse P’ship, 2013 WL 2099496,
at *2 (D.S.C. May 14, 2013); see also United States v. Town of Irmo, S.C., 2020 WL
1025686, at *5 (D.S.C. Mar. 3, 2020) (“Parties are prohibited from asserting conclusory,
boilerplate objections that fail to explain the precise grounds that make the request
objectionable.”) (internal quotation marks and alterations omitted). Although many of
Oppenheimer’s objections could fairly be characterized as fatally nonspecific, see ECF
No. 25-3 at 4–6, his responses to the relevant discovery requests include some
substantive, pointed objections that merit the court’s consideration. As such, the court
resolves to consider the substance of Oppenheimer’s arguments, rather than overruling
his objections on procedural grounds. Still, the court reminds counsel that boilerplate
objections have no place in litigation and their continued use will result in a waiver of the
right to object. Further, in the future, objections of the boilerplate variety will not be
redeemed by coupling them with more specific, meaningful objections or responses. As
Judge Anderson explained in Curtis:
The parties shall not recite a formulaic objection followed by an answer to
the request. It has become common practice for a party to object on the
basis of [vagueness, proportionality, or undue burden] and then state that,
“notwithstanding the above,” the party will respond to the discovery
request, subject to or without waiving such objection. Such an objection
and answer preserves nothing and serves only to waste the time and
resources of both the parties and the court. Further, such practice leaves the
requesting party uncertain as to whether the question has actually been fully
answered or whether only a portion of the question has been answered.
2013 WL 2099496, at *3.
4

2:20-cv-04219-DCN

Date Filed 09/08/21

Entry Number 34

Page 5 of 13

Oppenheimer has derived from previous copyright claims and the income he has earned
from his photography business are relevant to this lawsuit. In determining an appropriate
award of damages in a copyright infringement lawsuit, courts routinely consider the
extent to which the plaintiff has engaged in “copyright trolling.” As the Seventh Circuit
explained, “copyright trolls” are “opportunistic holders of copyrights” that “bring[]
strategic infringement claims of dubious merit in the hope of arranging prompt
settlements with defendants who would prefer to pay modest or nuisance settlements
rather than be tied up in expensive litigation.” Design Basics, LLC v. Lexington Homes,
Inc., 858 F.3d 1093, 1097 (7th Cir. 2017). “Like the proverbial troll under the bridge,
these firms try to extract rents from market participants who must choose between the
cost of settlement and the costs and risks of litigation.” Id.
Courts routinely factor a copyright plaintiff’s status as a copyright troll into their
damages calculus. See, e.g., ME2 Prods., Inc. v. Ahmed, 289 F. Supp. 3d 760, 764
(W.D. Va. 2018). Many courts have determined that minimum statutory damages are
appropriate where the plaintiff is a “copyright troll” who “seek[s] copyright infringement
damages not to be made whole, but rather as a primary or secondary revenue stream and
[who] file[s] mass lawsuits . . . with the hopes of coercing settlements.” Id. (quoting
Malibu Media, LLC v. [Redacted], 2017 WL 633315, at *3 (D. Md. Feb. 15, 2017) and
collecting cases). In fact, the Western District of North Carolina recently awarded
Oppenheimer himself minimum statutory damages in a similar copyright infringement
case based on the court’s finding that Oppenheimer files copyright claims “as a revenue
stream” rather than for the purpose of being made whole. Oppenheimer v. Griffin, 2019

5

2:20-cv-04219-DCN

Date Filed 09/08/21

Entry Number 34

Page 6 of 13

WL 7373784, at *7 (W.D.N.C. Dec. 31, 2019), appeal dismissed, 2020 WL 4365337 (4th
Cir. Mar. 23, 2020).
Even more compelling, the same court, in a distinct but similar copyright case
brought by Oppenheimer, recently found that Oppenheimer must produce the very
records defendants seek here, overruling Oppenheimer’s relevance objection:
Further, the relevance objections are also without merit. [Oppenheimer]’s
photography revenue, prior copyright assertions, and prior copyright
infringement lawsuits are relevant to the statutory damages at issue in this
matter. See Oppenheimer v. Holt, 2015 WL 2062189, at *2 (W.D.N.C.
May 4, 2015) (Reidinger, J.) (stating that “the revenue lost by the copyright
holder” and “the conduct and attitude of the parties” are relevant for the
purposes of determining statutory damages under the Copyright Act)
(citation omitted). As such, instances where [Oppenheimer] has asserted
his rights in his copyrights, the amounts recovered from those assertions,
and [his] licensing agreements are all relevant here. Likewise, other courts
have held that settlement agreements are relevant to the issue of damages in
intellectual property cases. See Smith v. NBC Universal, 2008 WL 483604,
at *4 (S.D.N.Y. Feb. 22, 2008) (“[E]vidence of the settlements and their
amount are relevant to a determination of the amount of statutory
damages . . . .”); see also Small v. Nobel Biocare USA, LLC, 808 F. Supp.
2d 584, 586–92 (S.D.N.Y. 2011) (finding settlement agreement relevant to
royalty in patent infringement action). As such, the settlement agreements
are relevant here and can be disclosed.
Oppenheimer v. Episcopal Communicators, Inc., 2020 WL 4732238, at *3 (W.D.N.C.
Aug. 14, 2020) (alterations in original). In yet another one of Oppenheimer’s copyright
lawsuits, from this very courthouse no less, Judge Richard M. Gergel found evidence of
Oppenheimer’s previous copyright litigation relevant to the issue of damages and ordered
him to “produce a list [ ] of lawsuits he has initiated to claim copyright infringement of
any of his photographs,” including “whether each litigation resulted in a settlement and,
if so, the settlement value and terms . . . .” Oppenheimer v. Scarafile et al., 2:19-cv3590-RMG (D.S.C.), ECF No. 55 at 5.

6

2:20-cv-04219-DCN

Date Filed 09/08/21

Entry Number 34

Page 7 of 13

The court likewise finds the evidence relevant and accordingly orders
Oppenheimer to produce evidence of all of his previous copyright claims and/or
demands, including the revenue he derived from each. The court finds that evidence of
Oppenheimer’s earnings from his photography businesses2 is likewise relevant and orders
him to produce evidence sufficiently indicating the same. Assessing all income sources
will assist the court in determining whether Oppenheimer is asserting this claim “to be
made whole” or as part of “a primary or secondary revenue stream.” ME2 Prods., Inc.,
289 F. Supp. 3d at 764. That consideration is clearly relevant to the issue of damages,
and Oppenheimer’s objection to the contrary is meritless.3 To be clear, the court does not
find that Oppenheimer is a “copyright troll” or that he utilizes copyright litigation as a
primary source of income; however, defendants’ requests are proper because that inquiry
is clearly relevant to the issue of damages and because the court must assess both revenue
streams to make an informed finding. If Oppenheimer wishes to reap the spoils of
copyright litigation, he must also incur its costs—namely, complying with valid
discovery requests.
Nevertheless, defendants’ requests, while relevant, at times sweep too broadly.
For example, defendants Request for Production No. 12 states: “Please produce all
documents and communications in any way related to each and every instance in which

2

From the oral arguments presented on this motion, the court understands that
Oppenheimer has at least one, if not more, LLCs through which he operates his
photography business.
3
Oppenheimer also contends that his alleged status as a “copyright troll” is
irrelevant to the affirmative defense of “copyright misuse.” See ECF No. 27 at 17. But
the defense of copyright misuse is not at issue here. Clearly, evidence of Oppenheimer’s
past copyright claims is relevant to the issue of damages, notwithstanding any affirmative
defense.
7

2:20-cv-04219-DCN

Date Filed 09/08/21

Entry Number 34

Page 8 of 13

you have in any way asserted copyright-related rights.” ECF No. 27-2 at 9. Intuitively,
not every document “in any way” related to Oppenheimer’s previous copyright claims is
necessary to determine appropriate damages here, meaning that the request is overly
broad. See Carter v. Archdale Police Dep’t, 2014 WL 1774471, at *5 (M.D.N.C. May 2,
2014) (“[A] request for all documents ‘relating to’ a subject is usually subject to criticism
as overbroad since . . . all documents ‘relate’ to all others in some remote fashion.”).
What is necessary to the relevant consideration is the income Oppenheimer has derived
from copyright infringement lawsuits, claims, and/or demands. Accordingly, the court
narrows defendants’ requests, such that Oppenheimer must only produce those
documents that reveal the copyright-related lawsuits, claims, and/or demands he has
asserted and the income he derived from each. Settlement agreements would certainly fit
the bill. Likewise, with respect to defendants’ requests concerning Oppenheimer’s
business earnings as a photographer, Oppenheimer must only produce documents
sufficient to definitively indicate his business earnings—tax returns would more than
likely suffice. Further, because Oppenheimer filed his first copyright infringement
lawsuit in this district in 2014, the court narrows the timeframe of the requests to seven
years. So narrowed, the requests are appropriately tailored under Rule 26.4
Oppenheimer asserts a slew of other objections, each of which the court overrules.
First, Oppenheimer notes that the sought settlement agreements cannot be disclosed
because they are confidential. But as this court has often held,

Oppenheimer’s claim that compiling the requested documents will require him
to “expend over 200 hours” is simply unbelievable. ECF No. 27 at 24. Moreover,
Oppenheimer’s claim that complying evidence of past litigation would require a
momentous effort does nothing to help him shed allegations that he files a large volume
of infringement cases as a means of earning a consistent income.
4

8

2:20-cv-04219-DCN

Date Filed 09/08/21

Entry Number 34

Page 9 of 13

[T]he Fourth Circuit ‘has never recognized a settlement privilege or
required a particularized showing in the context of a subpoena for
confidential settlement documents . . . . Accordingly, the only question
before the court is whether any information in the . . . agreement is relevant,
and not unduly burdensome to produce.’
Brown-Thomas v. Hynie, 2020 WL 6737757, at *4 (D.S.C. Nov. 17, 2020) (quoting
Polston v. Eli Lilly & Co., 2010 WL 2926159, at *1 (D.S.C. July 23, 2010)) (alterations
in original). Moreover, the relevant settlement agreements, if in fact confidential, will
remain that way, given that this case is governed by a confidentiality order. See ECF No.
23. And finally, Oppenheimer confirmed at the hearing that the relevant settlement
agreements’ confidentiality provisions are private agreements, not the result of court
orders. For these reasons, the confidentiality of the relevant settlement agreements
cannot operate as a shield to their disclosure.
Oppenheimer assets two additional objections with respect to evidence of his
business earnings as a professional photographer. First, he argues that compiling
evidence of his earnings would be unduly burdensome because he “is a sole proprietor
that does not keep a centralized database and cannot simply turn over 10 years-worth of
earnings records from multiple sources of ‘business’ and/or ‘professional services’
without undue burden and expense.” ECF No. 27 at 28–29. Oppenheimer also argues
that defendants’ request for his tax returns is too invasive. Id. at 29. But Oppenheimer
cannot have it both ways. If his concern is the burden posed by collecting decentralized
evidence of all of his business earnings, he may simply disclose his tax returns, which
would require minimal effort and reveal the necessary information.5 If, however, his

5

Moreover, counsel for Oppenheimer confirmed at the hearing that
Oppenheimer’s tax documents are prepared by a certified public accountant.
9

2:20-cv-04219-DCN

Date Filed 09/08/21

Entry Number 34

Page 10 of 13

concern is privacy, then he may withhold his tax returns and endeavor to produce
alternative documentation that sufficiently demonstrates his business earnings. The
“qualified privilege” that applies to tax returns is far from absolute, E. Auto Distributors,
Inc. v. Peugeot Motors of Am., Inc., 96 F.R.D. 147, 148 (E.D. Va. 1982), and, even
where it serves to shield tax returns from disclosure, courts routinely order the
withholding party to produce alternate documentation that reveals the sought information,
Terwilliger v. York Int’l Corp., 176 F.R.D. 214, 217 (W.D. Va. 1997). In short,
Oppenheimer must produce evidence of all of his business earnings one way or the other.
In sum, the court narrows the relevant discovery requests such that Oppenheimer
must produce evidence sufficient to conclusively indicate the income he has earned
through his previous copyright claims and/or demands as well as the income he has
earned from his professional photography business. To that extent, defendants’ motion to
compel is granted.
B. Attorneys’ Fees
In their Request for Production No. 9, defendants seek “all invoices submitted by
your attorneys[] and other evidence which will be used in support of your claim for
Lodestar costs and attorneys’ fees.” ECF No. 27-2 at 8. Oppenheimer responded to the
request with a boilerplate objection citing the attorney-client privilege (which, the court
notes, has no application here given that the privilege covers communications, not
information relevant to a calculation of attorneys’ fees) and claiming that he “does not

Oppenheimer’s use of a professional undercuts his argument that collecting the relevant
records would be overly burdensome.
10

2:20-cv-04219-DCN

Date Filed 09/08/21

Entry Number 34

Page 11 of 13

have responsive documents[.]” Id.6 In response to the motion to compel, Oppenheimer
abandons his privilege claims, admits the relevance of the sought materials, and argues
that the request is “premature.” ECF No. 27 at 30. Oppenheimer also notes that he has
now supplemented his response to include his attorneys’ hourly billing rate. Id.
As an initial matter, because Oppenheimer seeks attorneys’ fees in his complaint,
evidence of his attorneys’ hourly rates and hours expended is undoubtedly relevant.
Compl. ¶¶ 41, 45, 47, 55. Further, Oppenheimer must produce the requested
documentation for two reasons. For one, Oppenheimer did not initially object to
defendants’ request as “premature,” meaning that he waived his right to present such a
theory in response to the motion to compel. See Ayers v. Cont’l Cas. Co., 240 F.R.D.
216, 222 (N.D.W. Va. 2007) (“[T]he failure to raise an objection within the time period
allowed by the [Federal] Rules [of Civil Procedure] will result in waiver of the objection
unless the party seeking to raise the objection can show good cause for the failure.”).
Second, and more fundamentally, the law does not recognize “prematurity” as a valid
basis for withholding relevant evidence. To be discoverable, evidence must be relevant,
proportional, and nonprivileged; the rules recognize no maturity requirement. Fed. R.
Civ. P. 26(b). Therefore, the court orders Oppenheimer to produce the evidence he
would use to support his claim for attorneys’ fees, including the hours his counsel has
expended on the instant lawsuit and the fees they charge. Accordingly, the court grants
the motion to compel with respect to defendants’ Request for Production No. 9.

6

Despite his initial claim of not possessing any relevant documents,
Oppenheimer’s subsequent arguments make clear that he has the ability to produce
documentary evidence supporting his claim for attorneys’ fees.
11

2:20-cv-04219-DCN

Date Filed 09/08/21

Entry Number 34

Page 12 of 13

C. Privilege Log
Finally, defendants claim that Oppenheimer has failed to produce a sufficient
privilege log. Accordingly, they ask the court to deem Oppenheim’s assertion of the
attorney-client privilege waived or, alternatively, to order him to reform his privilege log.
Indeed, Oppenheimer asserted the attorney-client privilege in response to numerous
requests yet initially failed to produce a privilege log of any sort, as clearly required by
the federal rules. Fed. R. Civ. P. 26(b)(5) provides that:
When a party withholds information otherwise discoverable by claiming
that the information is privileged . . . , the party must: (i) expressly make
the claim; and (ii) describe the nature of the documents, communications,
or tangible things not produced or disclosed--and do so in a manner that,
without revealing information itself privileged or protected, will enable
other parties to assess the claim.
After defendants informed Oppenheimer of the deficiency, he provided a so-called
privilege log that wholly fails to identify the nature of the withheld communications. See
ECF No. 25-9.7 It is the law in this district that “[i]f a general objection of privilege is
made without attaching a proper privilege log, the objection of privilege may be deemed
waived.” Curtis, 2013 WL 2099496, at *3; see also ePlus Inc. v. Lawson Software, Inc.,
280 F.R.D. 247, 252 (E.D. Va. 2012) (deeming the attorney-client privilege waived with
respect to deficient privilege log entries); Atteberry v. Longmont United Hosp., 221
F.R.D. 644, 649 (D. Colo. 2004) (“The failure to produce a privilege log or production of
an inadequate privilege log may be deemed a waiver of the privilege asserted.”). A

Each entry of Oppenheimer’s “privilege log” includes one of four single-word
descriptors of the communications withheld: “Email,” “Article,” “Report,” and
“Research.” ECF No. 25-9. These labels do little to fulfil Oppenheimer’s obligation to
“describe the nature of the [withheld communications] . . . in a manner that . . . will
enable the other parties to assess the claim [of privilege].” Fed. R. Civ. P. 26(b)(5).
7

12

2:20-cv-04219-DCN

Date Filed 09/08/21

Entry Number 34

Page 13 of 13

finding of waiver is appropriate here. While a seemingly harsh result, the court’s finding
that Oppenheimer has waived the attorney-client privilege in this instance sufficiently
reflects Oppenheimer’s egregious failures to comply with the clear import of the federal
rules. Accordingly, the court deems the privilege waived and orders Oppenheimer to
produce the withheld communications.
IV. CONCLUSION
For the foregoing reasons the court GRANTS IN PART AND DENIES IN
PART the motion to compel in accordance with the instructions of this order.
AND IT IS SO ORDERED.

DAVID C. NORTON
UNITED STATES DISTRICT JUDGE
September 8, 2021
Charleston, South Carolina

13