Martinez v. McGraw et al.

Filing 365

MEMORANDUM AND ORDER: Pltf's 185 motion to compel is GRANTED in part and DENIED in part. To the extent that this memorandum and order directs defts to serve supplemental responses, such responses shall be served by 9/28/12. Oral argument on pltf's motion to compel is not necessary and defts' 196 motion for oral argument is DENIED. Signed by Magistrate Judge John S. Bryant on 9/11/12. (DOCKET TEXT SUMMARY ONLY-ATTORNEYS MUST OPEN THE PDF AND READ THE ORDER.) (rd)

UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF TENNESSEE
NASHVILLE DIVISION
JAMES MARTINEZ,
Plaintiff,
v.
SAMUEL TIMOTHY McGRAW, et al.,
Defendants.

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NO. 3:08-0738
Judge Campbell/Bryant
Jury Demand

MEMORANDUM AND ORDER
Plaintiff

Martinez

has

filed

his

motion

to

compel

responses to three requests in his first request for production
served on defendants (Docket Entry No. 185).

Defendants have

responded in opposition (Docket Entry No. 195), and plaintiff has
filed a reply (Docket Entry No. 200-2).
For the reasons stated below, plaintiff’s motion to
compel is GRANTED in part and DENIED in part.
Brief Statement of the Case
This is an action for copyright infringement.

Plaintiff

Martinez alleges that in 1996 he wrote a song entitled “Anytime,
Anywhere, Amanda,” and that he copyrighted this song on December 6,
1996.

Plaintiff

asserts

that

a

song

entitled

“Everywhere”

performed by defendant McGraw is a copy of plaintiff’s work, and
that defendants have infringed plaintiff’s copyright by selling and
performing the infringing song without plaintiff’s authorization.

Defendants deny that the song “Everywhere” was copied

from plaintiff’s earlier work, and they maintain that “Everywhere”
is an original composition written by defendants Wiseman and Reid.
Plaintiff’s Motion to Compel
Plaintiff by the present motion seeks an order requiring
defendants to serve additional responses to requests numbers 12, 17
and 18 of plaintiff’s first requests for production served on
defendants.

The undersigned Magistrate Judge will address each

individual request in numerical order.
Plaintiff’s Request for Production No. 12.

Plaintiff’s

Request for Production No. 12 reads as follows: “All contracts
between

and

documents

amongst

evidencing

any
the

of

the

Defendants

Defendants’

and/or

any

relationship(s)

other

to

the

Everywhere album.”
In

response,

defendants

have

produced

licensing

contracts, licensing correspondence and producer agreements for the
song “Everywhere,” but they have objected to further production on
the grounds that the request is “overly broad, unduly burdensome,
and is not reasonably calculated to lead to the discovery of
admissible evidence.”

(Docket Entry No. 95 at 3).

By way of

explanation, defendants assert that the album entitled Everywhere
includes not only the song “Everywhere” at issue in this case but
also a number of other, unrelated songs with respect to which
plaintiff asserts no claims.

Therefore, to the extent that

plaintiff’s Request No. 12 seeks all contracts and other documents
with respect to the Everywhere album, it seeks information that is
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neither relevant nor reasonably calculated to lead to the discovery
of admissible evidence.

Rule 26(b)(1), Federal Rules of Civil

Procedure.
In his reply plaintiff states: “Plaintiff needs and is
entitled to all of the contracts between the Defendants related to
the song Everywhere.”

(Docket Entry No. 200-2 at 3).

The

undersigned Magistrate Judge is inclined to agree.
The undersigned finds that plaintiff is entitled to any
contracts or other documentation between and among the defendants
related to the song “Everywhere,” regardless of whether such
contracts or correspondence refer solely to this song or to this
song as an included work in the album Everywhere. To the extent
that defendants have not already done so they shall produce such
contracts and documents to the plaintiff.

Defendants shall not be

required to produce contracts or documents with respect to the
other songs included on the Everywhere album to the extent that
such contracts and documents neither refer to, include, nor relate
to the song “Everywhere.”
Plaintiff’s Request for Production No. 17.
Request

for

Production

No.

17

reads

as

Plaintiff’s

follows:

“Documents

evidencing the amount of money Defendants have received from the
sale of recordings, lyric sheets and/or other materials embodying
Everywhere from 1997 to the present.”
Defendants

state

that

they

have

produced

documents

responsive to this request for the period March 8, 2004, to the
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present, and that they will supplement their response to reflect
sales since their earlier production.

Defendants object, however,

to producing responsive information for the period before March 8,
2004, on the grounds that the three-year statute of limitations for
copyright infringement bars claims earlier than three years before
the filing of the complaint.

Bridgeport Music, Inc. v. Rhyme

Syndicate Music, 376 F.3d 615, 621 (6th Cir. 2004).
In response, plaintiff argues, at least by implication,
that he has alleged fraudulent concealment of the infringement, and
that such fraudulent infringement tolls the applicable statute of
limitations

(Docket

Entry

No.

185-1

at

10).

Specifically,

plaintiff argues that allegations in the complaint that defendants
marketed the song “Everywhere” bearing their own copyright amounts
to fraudulent concealment of their wrongdoing (Docket Entry No.
200-2 at 5).

Plaintiff relies upon the decision of Taylor v.

Meirick, 712 F.2d 1112, 1118 (7th Cir. 1983) as support for this
position. However, The Meirick case involved not popular songs but
instead fishing maps of three Illinois lakes.

The court found as

follows: “The features that made [plaintiff’s] maps copyrightable
– and we repeat that the validity of his copyrights is not
contested – were subtle and would easily escape notice with
another’s name affixed as copyright holder.”

Id. at 1118.

Here, in contrast, plaintiff alleges that defendants
copied

his

song,

had

it

recorded

by

defendant

McGraw,

an

internationally prominent country music artist, and marketed the
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song for public consumption through compact disc sales, electronic
downloads, and radio air play.

Given these distinguishing facts,

the undersigned Magistrate Judge is not persuaded that the fact
that defendants placed their copyright on this work amounts to
fraudulent concealment.

See Bridgeport Music, Inc. v. Rhyme

Syndicate Music, 376 F.3d 615 (6th Cir. 2004); Stone v. Williams,
970 F.2d 1043, 1049-50 (2nd Cir. 1992).
Given the requirement in Rule 9(b) of the Federal Rules
of Civil Procedure that the circumstances supporting a claim of
fraud must be plead with particularity, the undersigned Magistrate
Judge finds that plaintiff’s complaint fails to meet the standard
and does not state a claim of fraudulent concealment merely because
plaintiff alleges that defendants marketed the subject song bearing
their own copyright.

Accordingly, under the authorities cited

above, plaintiff’s claims are limited to the period of three years
immediately preceding the filing of his complaint.

The complaint

was filed on March 8, 2007 (Docket Entry No. 1), and defendants
maintain that they have produced documents revealing the revenues
they earned from the subject song during the three years prior to
this filing date.
For the reason stated above, the undersigned Magistrate
Judge finds that, to the extent that plaintiff’s request for
production seeks information regarding revenues that predated this
period,

such

calculated

to

information
lead

to

is

the

neither
discovery
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relevant
of

nor

admissible

reasonably
evidence.

Accordingly,

with

respect

to

Request

for

Production

No.

17,

plaintiff’s motion to compel must be DENIED.
Plaintiff’s Request for Production No. 18. Request for
Production No. 18 reads as follows: “Copies of pleadings in any
lawsuit involving copyright infringement to which any of the
Defendants have been a party.”
Defendants have objected to this request on grounds that
it

is

“overly

broad,

unduly

burdensome

and

not

reasonably

calculated to lead to the discovery of admissible evidence.”

In

their motion papers, defendants add that the requested information
is likely inadmissible pursuant to the provisions of the Federal
Rules of Evidence and that copies of pleadings are generally
available as part of the public record.
Without deciding whether such information will or will
not be admissible at trial, the undersigned Magistrate Judge finds
that defendants should provide plaintiff with a list of each
lawsuit

filed

within

the

last

ten

years

alleging

copyright

infringement by any of the defendants. This list shall include for
each such case the title of the case, the name of the court where
it was filed, and the docket number.

Defendants shall not be

required to provide copies of pleadings, since plaintiff should be
able to obtain such information for himself from the public record.
To the extent that this memorandum and order directs
defendants to serve supplemental responses, such responses shall be
served on or before September 28, 2012.
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The undersigned Magistrate Judge finds that oral argument
on plaintiff’s motion to compel is not necessary and defendants’
motion for oral argument (Docket Entry No. 196) is DENIED.
It is so ORDERED.

s/ John S. Bryant
JOHN S. BRYANT
United States Magistrate Judge

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