Boyages v. The University of Vermont and State Agricultural College
Filing
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OPINION AND ORDER granting in part and denying in part 25 Motion to Compel Discovery. Signed by Judge William K. Sessions III on 1/27/2025. (law)
UNITED STATES DISTRICT COURT
FOR THE
DISTRICT OF VERMONT
SOPHIA BOYAGES,
)
)
Plaintiff,
)
)
v.
)
)
THE UNIVERSITY OF VERMONT AND )
STATE AGRICULTURAL COLLEGE,
)
)
Defendant.
)
Case No. 2:24-cv-538
OPINION AND ORDER
Plaintiff Sophia Boyages brings this action against the
University of Vermont and State Agricultural College (“UVM”)
claiming copyright infringement.
Pending before the Court is
Plaintiff’s motion to compel responses to four document requests
and one interrogatory.
For the reasons set forth below, the
motion to compel is granted in part and denied in part.
Background
Plaintiff is a former administrative assistant to the
Director of Athletics at UVM.
She is also an artist with
special skills in graphic design.
Because of her design skills
and experience, Plaintiff was invited to attend meetings with
the Athletic Department’s branding working group.
The Amended
Complaint alleges that, on her own time and with her own
resources, Plaintiff designed a logo depicting the front-facing
head of a mountain lion or catamount, which is the UVM mascot.
She entitled the work SophCat Design.
On January 31, 2023, she
presented the SophCat design to the members and directors of the
Athletic Department as a potential idea for a secondary UVM
logo.
She allegedly created the design with the hope of being
promoted within the Athletic Department or receiving credit and
compensation for her design work.
The Amended Complaint claims that without Plaintiff’s
consent or authorization, UVM copied, reproduced, displayed, and
published the SophCat design in various ways, including: a press
release stating that the design is the University’s secondary
logo; an application for Federal Trademark protection with the
United States Patent and Trademark Office; placing the design on
clothing, sporting equipment, and memorabilia; and using the
design as wall signage in the University’s facilities.
The
Amended Complaint also claims that Plaintiff owns a valid
copyright for the SophCat design and that UVM infringed on her
exclusive rights.
Now before the Court is Plaintiff’s motion to compel a
series of discovery responses.
The motion first seeks
production of metadata underlying certain documents.
The motion
further asks the Court to compel production of relevant
communications, including those stored on various UVM employees’
private phones.
Finally, Plaintiff moves to compel UVM’s
response to an interrogatory asking about the University’s
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policies and practices with respect to rebranding.
UVM argues
that is has already provided extensive discovery, that the
parties never agreed to provide metadata, and that the
information being sought is neither particularly relevant nor
proportional to the needs of the case.
Discussion
Federal district courts have broad discretion in deciding
motions to compel.
See Grand Central Partnership, Inc. v.
Cuomo, 166 F.3d 473, 488 (2d Cir. 1999).
The scope of discovery
is generally limited to any “nonprivileged 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 or expense of the proposed discovery
outweighs its likely benefit.”
Fed. R. Civ. P. 26(b)(1).
“Parties are entitled to discovery of documents in the
‘possession, custody or control’ of other parties, ... so long
as they are ‘relevant to any party’s claim or defense.’”
Fort
Worth Emps.’ Ret. Fund v. J.P. Morgan Chase & Co., 297 F.R.D.
99, 102 (S.D.N.Y. 2013) (quoting Fed. R. Civ. P. 26(b)(1)).
Once the party seeking discovery has demonstrated relevance, the
party resisting discovery “has the burden of showing
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specifically how, despite the broad and liberal construction
afforded the federal discovery rules,” the discovery sought is
“overly broad, burdensome or oppressive.”
Id. (citation
omitted).
I.
Document Request 1 (Metadata)
Plaintiff’s first document request asks for “[a] copy of
each draft or version of the Sophcat Design, including, but not
limited to, all works that are substantially similar, derived
from, or based on the Sophcat Design.”
UVM has produced the
photoshop (PSD) file that UVM employee Pete Estes received from
Plaintiff.
UVM did not provide the metadata of the file.
Plaintiff seeks disclosure of the metadata in part to reveal the
date and time that Estes received the file, asserting that such
information is retained only by the file recipient.
Plaintiff also requests the original file of Kate Youlen’s
derivative version of the SophCat design.
UVM’s opposition
memorandum submits that none of Kate Youlen’s work was included
in the final image, and that her version is therefore
irrelevant.
Plaintiff’s reply memorandum does not respond to
that argument.
The Court therefore sustains UVM’s relevance
objection and will not compel production of Youlen’s original
file.
With respect to the Estes file, the underlying metadata
consists of imbedded information that describes the document’s
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history.
See Aguilar v. Immigration and Customs Enforcement
Div., 255 F.R.D. 350, 353-55 (S.D.N.Y. 2008) (describing the
nature of metadata).
Plaintiff submits that the PSD file
downloaded onto Estes’ computer would contain metadata that
includes drafts or derivatives of the SophCat design.
If the
metadata does, in fact, contain such information, those drafts
are plainly relevant to Plaintiff’s claims with respect to
authorship.
For support of their relative positions on metadata
production, both parties cite Aguilar, in which the district
court provided a thorough discussion of recent legal
developments on that issue.
Id. at 355-59.
While Aguilar
reflected some resistance to compelling production of metadata,
many of the factual complexities in that case, including
production of spreadsheets and databases, are not present here.
See id. at 359-63.
Plaintiff’s reply memorandum suggests that the requested
metadata could be produced, at least in part, simply by means of
either “a screenshot of the date and time the PSD file was
received in Pete Estes’ downloads folder or [by] provid[ing]
Plaintiff with the exact time date and time of when the PSD file
was received.”
ECF No. 27 at 1.
Although UVM argues that such
production is unnecessary since the relevant timelines are not
disputed, Plaintiff contends that the date and time in question
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is nonetheless significant.
As the burden of such production
will be minimal, the Court grants Plaintiff’s motion to compel
that limited information.
As to other metadata production, Aguilar noted that when,
as in this case, the parties did not come to an agreement about
metadata data in their initial discovery stipulations, “courts
tend to deny later requests, often concluding that the metadata
is not relevant.”
Id. at 357.
If the ultimate determinant is
relevance, however, Plaintiff’s desire for all derivative
versions of the design appears justified on its face.
Furthermore, Aguilar noted a recent consensus that metadata
production should be made in the form or forms in
which the information is ordinarily maintained or in a
reasonably usable form, taking into account the need
to produce reasonably accessible metadata that will
enable the receiving party to have the same ability to
access, search, and display the information as the
producing party where appropriate or necessary in
light of the nature of the information and the needs
of the case.
Id. at 356 (quoting The Sedona Principles: Best Practices
Recommendations and Principles for Addressing Electronic
Document Production Principle 12 (2d ed.)).
In keeping with
that principle, and given the relevance of the requested
information, Plaintiff is entitled to access the data file
delivered to Estes such that she has “the same ability to
access, search, and display the information as the producing
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party.”
Plaintiff’s motion to compel further discovery in
response her first discovery request is therefore granted.
II.
Document Requests 9-11
Plaintiff next moves to compel additional responses to
Document Requests 9, 10, and 11.
Request 9 seeks “[a]ll
documents between members of the Branding Working Group” and
other members of that group, as well as documents exchanged with
“others, including UVM employees and persons external to UVM”
relating to or concerning the refreshing of UVM logos, creation
of the SophCat Design, and “a secondary logo and front facing
catamount design for the Athletic Department.”
Request 10 seeks
“all documents between” Krista Balogh and Plaintiff relating to
the SophCat Design and a secondary logo.
Request 11 seeks
communications between Balogh and members of the Branding
Working Group regarding the same issues covered in the previous
two requests.
The parties’ disputes focus on two issues: (1) messages on
private phones and devices owned by members of the Branding
Working Group, and (2) when members of the working group were
invited to be a part of that group.
With respect to access to
private devices, Estes and Balogh reportedly volunteered to
produce relevant information from their devices, and those
communications have been produced.
UVM contends that those two
individuals – Balogh as the head of the working group and Estes
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as a person who contributed to changes to the catamount logo at
issue – are the key employees involved.
UVM has not asked
others in the Branding Working Group to produce any
communications.
Plaintiff argues that UVM has the “practical
ability” to access information from other members of the group
and should be compelled to do so.
Under Rule 34 of the Federal Rules of Civil Procedure, a
responding party is required to produce requested documents that
are within the “responding party’s possession, custody, or
control.”
Fed. R. Civ. P. 34(a).
Control, as that word is used in Rule 34, “does not
require that the party have legal ownership or actual
physical possession of the documents [and other
tangible objects] at issue; rather, documents [and
other tangible objects] are considered to be under a
party’s control when that party has the right,
authority, or practical ability to obtain the
documents [and other tangible objects] from a nonparty to the action.
Shim-Larkin v. City of New York, No. 16-cv-6099 (AJN/KNF), 2019
WL 5198792, at *10 (S.D.N.Y. Sept. 16, 2019) (alterations in
original) (quoting The Bank of N.Y. v. Meridien Biao Bank
Tanzania Ltd., 171 F.R.D. 135, 146 (S.D.N.Y. 1997)).
“Courts
have repeatedly found that employers have control over their
employees and can be required to produce documents [and other
tangible objects] in their employees’ possession.”
2019 WL 5198792, at *10.
Shim-Larkin,
Furthermore, “[i]t is well established
that text messages ‘fit comfortably within the scope of
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materials that a party may request under Rule 34.’”
Paisley
Park Enters., Inc. v. Boxill, 330 F.R.D. 226, 234 (D. Minn.
2019) (quoting Flagg v. City of Detroit, 252 F.R.D. 346, 352–53
(E.D. Mich. 2008)).
Consistent with this case law, the Court finds that
Plaintiff may ask UVM for relevant communications on its
employees’ devices.
Although Plaintiff initially requested
communications among the Branding Working Group and other
individuals both within and outside of UVM, her briefing appears
to narrow the request to just members of the working group.
See, e.g., ECF No. 27 at 2 (“Plaintiff’s request for the text
messages of the members of the branding working group is not a
fishing expedition.”).
So narrowed, the Court finds that the
request is not disproportionate to the needs of the case.
The
Court also finds that such communications are relevant to the
extent they pertain either to development of the catamount image
in question, and/or to Plaintiff’s contributions to the
development of a secondary logo.
UVM shall therefore ask other
members of the working group to search their devices, including
cell phones, for those relevant communications, and any such
communications shall be produced.
Plaintiff also requests information about when members of
the working group were invited to participate in the group.
claims that such information is relevant because, among other
She
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things, it places her own invitation in context.
UVM has
reportedly revealed when two of the eight members received their
invitations, and communicated that it has no further
information.
Plaintiff alleges that Microsoft Outlook stores
such information in Teams.
To the extent this limited
information exists or is reasonably recoverable, its shall be
produced.
III. Interrogatory 8
The final dispute pertains to Plaintiff’s Interrogatory 8,
which asks UVM to “[d[escribe in detail UVM’s policies,
procedures, practices, and implementation around rebranding
concerning logo creation and development and brand refreshing.”
UVM responded that it does not have any such policies,
procedures, or practices.
Plaintiff disputes that assertion,
noting that the new logo had to be approved by various UVM
officials.
UVM attributes the lack of policy to the fact that
re-branding happens infrequently and is not a part of regular
University operations.
The Court cannot compel information that does not exist.
While perhaps there is no formal policy with respect to “logo
creation and development and brand creation,” there may be
accepted practices for finalizing marketing or other UVM
materials prior to their publication.
Plaintiff’s counsel can
pursue the desired information in the course of future discovery
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efforts, including depositions.
Because there is no formal
policy responsive to Plaintiff’s current request, however, the
motion to compel a supplemental response to Interrogatory 8 is
denied.
Conclusion
For the reasons set forth above, Plaintiff’s motion to
compel (ECF No. 25) is granted in part and denied in part.
The
parties shall bear their own fees and costs with respect to the
motion.
DATED at Burlington, in the District of Vermont, this 27th
day of January, 2025.
/s/ William K. Sessions III
Hon. William K. Sessions III
U.S. District Court Judge
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