Discovery and Pre-Trial Investigations in Copyright February 20, 2013 WestlegalEd Center

Raymond J. Dowd Partner Dunnington Bartholow & Miller LLP 1359 Broadway #600 New York NY 10018 rdowd@dunnington.com

Luke McGrath Partner lmcgrath@dunnington.com

Dowd is the author Copyright Litigation Handbook (West 2011 Ed)(cited as CLH). Copyright Litigation Handbook is available in hard copy for easy portability and deskside use or available to Westlaw subscribers through the database ID COPYLITIG. McGrath is a former prosecutor and experienced litigator. A FEW DISCOVERY PRACTICE TIPS 1. First step should always be a litigation hold letter. Philips Electronics North America Corp. v. BC Technical, 773 F. Supp.2d 1149 (D. Utah)(awarding sanctions of judgment, attorneys fees, and spoliation sanctions for failure to issue litigation hold, intentional destruction of documents, and subsequent misrepresentations to the court). A partys discovery obligations do not end with the implementation of a litigation hold to the contrary, thats only the beginning. Counsel must oversee compliance with the litigation hold, monitoring the partys efforts to retain and produce the relevant documents. Proper communication between a party and her lawyer will ensure (1) that all relevant information (or at least all sources of relevant information) is discovered, (2) that relevant information is retained on a continuing basis; and (3) that relevant non-privileged material is produced to the opposing

party. Zubulake v. UBS Warburg LLC, 2004 WL 1620866 (S.D.N.Y. July 20, 2004) (Zubulake V).

2. Consider expedited discovery A number of district courts have found good cause to permit expedited discovery under the Federal Rules where the recording industry has IP addresses for individuals who have illegally distributed or downloaded music, but do not have the name of the person whose computer was assigned that address. See Capitol Records, Inc. v. Doe, No. 07-cv-1570, 2007 WL 2429830 (S.D.Cal. Aug. 24, 2007) (granting subpoena for information from University of California, San Diego); Warner Bros., Records Inc. v. Does 1-4, No. 2:07-cv-424, 2007 WL 1960602 (D.Utah July 5, 2007) (granting subpoena for information from Off Campus Telecommunications); Warner Bros. Records, Inc. v. Does 1-20, No. 07-cv-1131, 2007 WL 1655365 (D. Colo. June 5, 2007) (granting subpoena for information from Quest Communications); Arista Records, LLC v. Does 1-9, No. 07-cv-628, 2007 WL 1059049 (D. Colo. April 4, 2007). Courts typically have found good cause based upon (1) allegations of copyright infringement, (2) the danger that the ISP will not preserve the information sought, (3) the narrow scope of the information sought, and (4) the conclusion that expedited discovery would substantially contribute to moving the case forward. See e.g. Capital Records, Inc. 2007 WL 2429830 at *1. Plaintiffs in this case seek expedited discovery in order to gain access to documents that would identify each Defendant's true name, address (current and permanent), telephone number, email address, and Media Access Control (MAC) address. Arista Records, LLC v. Does 1-9, 2008 WL 2982265 (S.D. Ohio 2008). 3. Discovery as a collaborative process Many attorneys seek to use meet and confer strategically as a means of winning in a discovery battle. An adept practitioner will be wary of such strategies, but will also approach discovery in the maner the Courts have sought to craft it: a cooperative collaborative process in which both clients win if the lawyers work together to produce the correct materials in the most cost-effective manner. Courts have increasingly imposed duties upon counsel conducting electronic discovery to cooperate. E.g., Mancia v. Mayflower Textile Servs. Co., 2008 WL 4595175 (D. Md. Oct. 15, 2008). From the case: Before proceeding further on a discovery dispute, the court ordered the parties to meet while keeping in mind the statement in Fed. R. Civ. P. 26(g)(1)(B)(iii) that discovery must be proportional to what is at stake in the litigation. Plaintiffs in a collective action alleging failure of defendants to provide overtime pay filed motions to compel further discovery responses by defendants. The court reviewed defendants objections to plaintiffs discovery and found apparent violations of Fed. R. Civ. P.

26, 33, and 34 because defendants failed to state objections with specificity and apparently failed to make a reasonable inquiry before responding. After a hearing, the court ordered the parties to meet to resolve their differences. The court pointed out that Fed. R. Civ. P. 26(g) required a reasonable inquiry by the attorney before requesting or responding to discovery. The growing concern over the expense of litigation, especially with the advent of electronic discovery, could be addressed, according to the court, if lawyers met and conferred before initiating discovery to discuss the amount in controversy and how to conduct discovery that was proportional to what was at stake. The court stated that the requirement of discovery being proportional to what was at issue was effectively stated by Rule 26(g)(1)(B)(iii) and Rule 26(b)(2)(C)(i)-(iii). The court noted that the Sedona Conference had issued a Cooperation Proclamation that had the laudable goal of achieving transparent discovery. In the meantime, the court provided the parties with guidance on the requirements of Rules 26(b)(2)(C) and 26(g). Counsel were ordered to meet to quantify a workable discovery budget that is proportional to what is at issue in the case, to consider phased discovery with initial production of least burdensome or expensive sources of information, and to present the court with a status report in a format required by the court identifying any unresolved issues.

I. Initial discovery considerations

Rule 26(d) of the Federal Rules of Civil Procedure generally provides that formal discovery will not commence until after the parties have conferred as required by Rule 26(f).1 Courts may permit expedited discovery before the Rule 26(f) conference upon a showing of good cause.2 Good cause exists where the need for expedited discovery, in consideration of the administration of justice, outweighs the prejudice to the responding party.3 Rule 26(d) provides: A party may not seek discovery from any source before the parties have conferred as required by Rule 26(f), except in a proceeding exempted from initial disclosure under Rule 26(a)(1)(B), or when authorized by these rules, by stipulation, or by court order.4
Fed. R. Civ. P. 26(d) and (f); American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1066-67 (C.D. Cal. 2009); Qwest Communications Intern., Inc. v. WorldQuest Networks, Inc., 213 F.R.D. 418, 419 (D. Colo. 2003) (footnote added); In re Countrywide Financial Corp. Derivative Litigation, 542 F. Supp. 2d 1160, 1179 (C.D. Cal. 2008), subsequent determination, 554 F. Supp. 2d 1044 (C.D. Cal. 2008); Ayyash v. Bank Al-Madina, 233 F.R.D. 325, 326, 63 Fed. R. Serv. 3d 680 (S.D. N.Y. 2005). 2 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1066-67 (C.D. Cal. 2009), citing In re Countrywide Fin. Corp. Derivative Litig., 542 F. Supp. 2d at 1179; Semitool, Inc. v. Tokyo Electron America, Inc., 208 F.R.D. 273, 276 (N.D. Cal. 2002); see also Qwest Communications Intern., Inc. v. WorldQuest Networks, Inc., 213 F.R.D. 418, 419 (D. Colo. 2003) (party seeking expedited discovery prior to Rule 26(f) conference has burden of showing good cause); Merrill Lynch, Pierce, Fenner & Smith, Inc. v. O'Connor, 194 F.R.D. 618, 623 (N.D. Ill. 2000) (expedited discovery requires plaintiff show prima facie the need for the expedited discovery). 3 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1066-67 (C.D. Cal. 2009), citing In re Countrywide Financial Corp. Derivative Litigation, 542 F. Supp. 2d 1160, 1179 (C.D. Cal. 2008), subsequent determination, 554 F. Supp. 2d 1044 (C.D. Cal. 2008). 4 Fed. R. Civ. P. 26(d)(1).
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"The good cause standard may be satisfied where a party seeks a preliminary injunction."5 However, expedited discovery is not automatically granted merely because a party seeks a preliminary injunction, so where a plaintiff seeks expedited discovery to prepare for a preliminary injunction hearing, the court will consider the entirety of the record and the reasonableness of the request in light of the circumstances.6 Factors commonly considered in determining the reasonableness of an expedited discovery request include, but are not limited to: (1) whether a preliminary injunction is pending; (2) the breadth of the discovery requests; (3) the purpose for requesting the expedited discovery; (4) the burden on the defendants to comply with the requests; and (5) how far in advance of the typical discovery process the request was made.7 In every case, the court has the discretion, in the interests of justice, to prevent excessive or burdensome discovery.8 By asking for expedited discovery that is not narrowly tailored to preliminary issues, a plaintiff risks having its entire application denied.9 Where the identity of a defendant is unknown, a defendant may seek leave for discovery prior to a Rule 26(f) conference by ex parte motion.110 Discovery in copyright cases follows the same principles under the Federal Rules of Civil Procedure as do other litigations. Try to get as much information as possible through informal channels prior to filing suit. Once the litigation is commenced, you must provide copies to your adversary of all communications to third parties seeking evidence. In cases involving adversaries such as counterfeiting operations, the evidence is likely to disappear quickly once notification occurs, so ex parte relief should be considered. Where the potential copyright litigation involves specialized knowledge, such as music or software cases, it may be advisable to hire an expert prior to drafting the complaint and filing the case. Make sure to conduct a thorough client interview.11 A copyright registration certificate is not only prima facie evidence of copyright ownership, but also a jurisdictional prerequisite to filing suit in federal court. Make sure to obtain the copyright registration certificate from the Copyright Office prior to filing suit.12 Using the expedited special handling procedure, the certificate may be obtained in as little as five business days.13
American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1066-67 (C.D. Cal. 2009), citing Qwest Communications Intern., Inc. v. WorldQuest Networks, Inc., 213 F.R.D. 418, 419 (D. Colo. 2003); see also El Pollo Loco, S.A. de C.V. v. El Pollo Loco, Inc., 344 F. Supp. 2d 986, 991 (S.D. Tex. 2004) (expedited discovery for preliminary injunctions or challenges to personal jurisdiction). 6 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1067 (C.D. Cal. 2009), citing Merrill Lynch, Pierce, Fenner & Smith, 194 F.R.D. at 624 (footnote added). 7 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1067 (C.D. Cal. 2009), citing Disability Rights Council of Greater Washington v. Washington Metropolitan Area Transit Authority, 234 F.R.D. 4, 6 (D.D.C. 2006) (citations omitted); Qwest Communications Intern., Inc. v. WorldQuest Networks, Inc., 213 F.R.D. 418, 419 (D. Colo. 2003). 8 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1067 (C.D. Cal. 2009), citing Qwest Communications Intern., Inc. v. WorldQuest Networks, Inc., 213 F.R.D. 418, 419 (D. Colo. 2003); Wachovia Securities, L.L.C. v. Stanton, 571 F. Supp. 2d 1014, 1050 (N.D. Iowa 2008). 9 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1071 (C.D. Cal. 2009). 10 Arista Records LLC v. Does 1-27, 584 F. Supp. 2d 240, 253, 239 Ed. Law Rep. 476 (D. Me. 2008); UMG Recordings, Inc. v. Doe, 2008 WL 4104214, *3 (N.D. Cal. 2008); Arista Records LLC v. Does 1-19, 551 F. Supp. 2d 1, 6, 233 Ed. Law Rep. 645 (D.D.C. 2008). 11 See Chapter 3, 3:1 et seq. 12 See Chapter 4, 4:1 et seq. 13 See Chapter 5, 5:1 et seq.
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Many issues in copyright litigation are resolved on motion practice, ex parte applications, or hearings not involving juries. From the beginning, it is important to case strategy to think about how to collect admissible evidence to support every aspect of the case and to ensure where possible that early rulings on admissibility are obtained to avoid surprise at trial. Even where a defendant defaults in answering, a plaintiff will still be called upon to establish facts permitting the court to determine liability.14 II. Preservation orders Federal courts have the implied or inherent power to issue preservation orders as part of their general authority to manage their own affairs so as to achieve the orderly and expeditious disposition of cases.15 Inherent powers must be exercised with restraint and discretion.16 In determining whether to grant a request for a preservation order, the Court of Claims has adopted a streamlined two-prong standard that "requires that one seeking a preservation order demonstrate that it is necessary and not unduly burdensome."17 The Court of Claims has explained this standard precludes consideration of "whether plaintiff is likely to be successful on the merits of its case in deciding whether to protect records from destruction."18 To meet the first prong of this test, the proponent ordinarily must show that absent a court order, there is significant risk that relevant evidence will be lost or destroyed--a burden often met by demonstrating that the opposing party has lost or destroyed evidence in the past or has inadequate retention procedures in place. More than that, the proponent must show that the particular steps to be adopted will be effective, but not overbroad--the court will neither lightly exercise its inherent power to protect evidence nor indulge in an exercise in futility.19 Some federal courts, however, have found the streamlined two-prong standard of the Court of Claims to be inadequate, and instead have adopted a "balancing test" which considers the following three factors: 1) the level of concern the court has for the continuing existence and maintenance of the integrity of the evidence in question in the absence of an order directing preservation of the evidence; 2) any irreparable harm likely to result to the party seeking the
See Apple Computer Inc. v. Micro Team, 2000 WL 1897354 (N.D. Cal. 2000) (declining to enter a default judgment without evidence). 15 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1071-72 (C.D. Cal. 2009), citing Pueblo of Laguna v. U.S., 60 Fed. Cl. 133, 135-36 (2004) (quoting Link v. Wabash R. Co., 370 U.S. 626, 630-31, 82 S. Ct. 1386, 1389, 8 L. Ed. 2d 734, 6 Fed. R. Serv. 2d 831 (1962)). 16 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1071-1072 (C.D. Cal. 2009), citing Chambers v. NASCO, Inc., 501 U.S. 32, 44, 111 S. Ct. 2123, 2132, 115 L. Ed. 2d 27, 19 Fed. R. Serv. 3d 817 (1991). 17 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1071-1072 (C.D. Cal. 2009), citing Pueblo of Laguna v. U.S., 60 Fed. Cl. 133, 138 (2004). 18 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1071-1072 (C.D. Cal. 2009), citing Pueblo of Laguna v. U.S., 60 Fed. Cl. 133, 138 n.8 (2004). 19 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1071-72 (C.D. Cal. 2009), citing Pueblo of Laguna v. U.S., 60 Fed. Cl. 133, 138 n.8 (2004).
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preservation of evidence absent an order directing preservation; and 3) the capability of an individual, entity, or party to maintain the evidence sought to be preserved, not only as to the evidence's original form, condition or contents, but also the physical, spatial and financial burdens created by ordering evidence preservation.20 The difference between these two tests lies in what the moving party must show with respect to the content of the evidence that is in danger of being destroyed.21 This test also rejects consideration of the "proof of a probability of success in the litigation" factor, as well as the "public interest" factor, generally considered when determining injunctive relief.22 Where a plaintiff makes overbroad requests, fails to address the risk that evidence will go missing or be destroyed, fails to explain the need for the preservation order, and fails to address the burden that would be imposed upon the defendants, a court may deny an application for a preservation order.23

III. Mandatory initial disclosure under Rule 26

After filing the complaint, mandatory disclosure under Rule 26 will be the first evidence that the parties will need to exchange. Mandatory disclosures must be made in writing, signed and served.24 Failure to comply with Rule 26(a) can lead to a pleading being stricken.25 Attorneys who are not familiar with federal practice may find these procedures strikingly different from their usual practices. Rule 26 requires this exchange to take place after an initial conference between the parties to agree on a discovery plan.26 Under Rule 26, this initial conference, known as a Rule 26(f) Conference, is to take place between the parties and not involving the court, and has a very specific agenda. The parties must develop a proposed discovery plan that indicates the parties' views and proposals concerning: what changes should be made in the timing, form, or requirement for disclosures under Rule 26(a), including a statement as to when disclosures under Rule 26(a)(1) were made or will be made;27 the subjects on which discovery may be needed, when discovery should be completed, and whether discovery should be conducted in phases or be limited to or focused upon particular issues;28 what changes should be made in the limitations on discovery and what other limitations should be imposed;29 and
American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1071-72 (C.D. Cal. 2009), citing Capricorn Power Co., Inc. v. Siemens Westinghouse Power Corp., 220 F.R.D. 429, 433-34 (W.D. Pa. 2004) (footnote omitted) 21 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1073 (C.D. Cal. 2009), citing Treppel v. Biovail Corp., 233 F.R.D. 363, 370 (S.D. N.Y. 2006). 22 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1073 (C.D. Cal. 2009), citing Capricorn Power Co., Inc. v. Siemens Westinghouse Power Corp., 220 F.R.D. 429, 433 n.1 (W.D. Pa. 2004). 23 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1073-74 (C.D. Cal. 2009) 24 Fed. R. Civ. P. 26(a)(4). 25 Chanel, Inc. v. Kouzniakova, 2008 WL 2741133, *1 (E.D. N.Y. 2008) (striking answer). 26 Fed. R. Civ. P. 26(f). 27 Fed. R. Civ. P. 26(f)(1). 28 Fed. R. Civ. P. 26(f)(2). 29 Fed. R. Civ. P. 26(f)(3).
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 any other discovery orders that the parties intend to seek from the court.30 Absent agreement between the parties extending the time to exchange evidence, 14 days after the Rule 26(f) conference, the following evidence must be exchanged: the name and, if known, the address and telephone number of each individual likely to have discoverable information that the disclosing party may use to support its claims or defenses, unless solely for impeachment, identifying the subjects of the information;31 a copy of, or a description by category and location of, all documents, data compilations, and tangible things that are in the possession, custody, or control of the party and that the disclosing party may use to support its claims were defenses, unless solely for impeachment;32 the computation of any category of damages claimed by the disclosing party, making available for inspection and copying as under Rule 34, the documents or other evidentiary material, not privileged or protected from disclosure, on which such computation is based, including materials bearing on the nature and extent of injuries suffered;33 and for inspection and copying as under Rule 34 any insurance agreement under which any person carrying on an insurance business may be liable to satisfy part or all of the judgment which may be entered in the action or to indemnify or reimburse for payments made to satisfy the judgment.34 It is important to check local rules, the judge's individual rules, and local practices in the very early stages of the litigation. Under Rule 26(f), the foregoing information is presumptively discoverable immediately unless the parties agree otherwise or objections were timely raised to the court.35 In federal practice, conferring with an adversary on issues relating to discovery may avoid needless expense and delay, particularly where both sides agree. Rule 29 of the Federal Rules of Civil Procedure permits many of the discovery procedures mandated by the rules to be varied by the parties. Parties may try to bifurcate discovery on liability and damages, but where a discovery plan benefits only one party and prejudices another, it may be rejected.36

Federal Rule of Civil Procedure 26 requires parties to disclose the discovery requested regarding any nonprivileged matter that is relevant to any party's claim or defense.37 The Rule also provides that a party who has made disclosures such as responses to interrogatories or requests for production of documents, "must supplement or correct its disclosure or response in a timely manner if the party learns that in some material respect the disclosure or response is incomplete or incorrect, and if the additional information has not otherwise been made known to the other parties during the discovery process."38 Rule 37(c)(1) gives teeth to these requirements
Fed. R. Civ. P. 26(f)(4). Fed. R. Civ. P. 26(f)(1)(A). 32 Fed. R. Civ. P. 26(f)(1)(B). 33 Fed. R. Civ. P. 26(f)(1)(C). 34 Fed. R. Civ. P. 26(f)(1)(D). 35 Fed. R. Civ. P. 26(a). 36 See, e.g., Persian Carpet, Inc. v. L. & J.G. Stickley, Inc., 2010 WL 1052266, *2 (M.D. N.C. 2010) (rejecting a bifurcation plan based on discovery only into the defense of copyright ownership). 37 Fed. R. Civ. P. 26(b)(1). 38 Fed. R. Civ. P. 26(e)(1)(A).
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by forbidding the use at trial of any information required to be disclosed by Rule 26(a) that is not properly disclosed.39 Rule 37 provides in pertinent part: "A party that without substantial justification fails to disclose information required by Rule 26(a) or 26(e)(1), or to amend a prior response to discovery as required by Rule 26(e)(2), is not, unless such failure is harmless, permitted to use as evidence at a trial, at a hearing, or on a motion any witness or information not so disclosed."40

IV. Pretrial disclosures

Absent a court order or agreement of the parties to the contrary, 90 days prior to trial, the following additional evidence must be disclosed: the identity of any expert witnesses;41 written expert reports;42 the names and addresses of any additional expected witnesses;43 the designation of any witnesses whose testimony will be presented by deposition excerpts, along with the pertinent portions of the deposition testimony;44 and an identification of each document or other exhibit (including summaries of other evidence) separately identifying those which the party expects to offer and those which the party may offer if the need arises.45

V. Additional discovery tools

In addition to the automatic disclosure, parties may obtain discovery by one or more of the following methods: Depositions upon oral examination under Rule 3046 Depositions upon written questions under Rule 3147 Written interrogatories under Rule 3348 Request for or subpoena for production of documents or things or permission to enter upon land or other property for inspection and other purposes under Rule 34 or Rule 4549 Physical and mental examinations under Rule 3550 Requests for admission under Rule 3651 Letters rogatory for parties and nonparties outside the United States
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Fed. R. Civ. P. 37(c)(1). Microsoft Corp. v. EEE Business Inc., 2008 WL 4369773, *2 (N.D. Cal. 2008); Yeti by Molly, Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101, 1106, 59 U.S.P.Q.2d 1833, 50 Fed. R. Serv. 3d 319 (9th Cir. 2001). 40 Fed. R. Civ. P. 37(c)(1). 41 Fed. R. Civ. P. 26(a)(2)(A). 42 Fed. R. Civ. P. 26(a)(2)(B). 43 Fed. R. Civ. P. 26(a)(3)(A). 44 Fed. R. Civ. P. 26(a)(3)(B). 45 Fed. R. Civ. P. 26(a)(3)(C). 46 Fed. R. Civ. P. 26(a)(5), 30. 47 Fed. R. Civ. P. 31. 48 Fed. R. Civ. P. 26(a)(5); 33(a) (limiting to 25 the number of interrogatories to be served absent leave of court). It is important to check local rules for uses of and limitations on interrogatories. 49 Fed. R. Civ. P. 26(a)(5), 34, 45. 50 Fed. R. Civ. P. 26(a)(5), 35. 51 Fed. R. Civ. P. 26(a)(5), 36.

VI. Motion practice that may occur related to discovery and evidence
Motions to compel testimony, production of documents, or other responses to discovery requests Motions concerning protective orders Motions to quash subpoenas Motions for discovery sanctions Motions in limine to admit or preclude evidence Motions to withdraw admissions Motions to determine the sufficiency of discovery responses Where a plaintiff can show a nexus between an infringement and indirect profits, a court may grant a motion to compel production of financial information.52 Where a party has made a motion to compel complete responses to interrogatories, a court may opt instead to limit testimony to the extent of the responses.53 Where a motion to compel production of documents is granted, a court may also require a party to provide a written response describing efforts to locate such documents if the party is unable to produce them.54 A motion to compel will be denied where the moving party cannot show that an offer to permit inspection of the document will be onerous.55

VII. Collecting evidence in jurisdictions outside the United States

Copyright infringement actions often involve witnesses or evidence outside the United States. A court may order depositions of a party witness, such as a company representative, to be held outside the United States.56 The best direct source of information is the United States Department of State's Web site under the topic Judicial Assistance.57 It is important to determine first what treaties a country has entered into with the United States and whether that country has restrictions on evidence collection by consulting Country-Specific Information.58 For litigation involving gathering evidence in foreign jurisdictions, the issuance of letters rogatory pursuant to Rule 28(b) of the Federal Rules of Civil Procedure may be necessary and appropriate.59 If such discovery is illegal in a foreign jurisdiction, this claim must be raised before the discovery occurs and is not grounds for excluding evidence obtained in violation of foreign laws.60 Where dismissal under Rule 19 of the Federal Rules of Civil Procedure is urged because a party has allegedly failed to join an indispensable party who is outside the United States, a
Urband & Lazar Music Pub., Inc. v. Carter, 2009 WL 799759, *2 (E.D. La. 2009). Knowledgeaz, Inc. v. Jim Walters Resources, Inc., 2009 WL 425961, *2 (S.D. Ind. 2009). 54 Weber Design Group, Inc. v. U.S. Wrecking and Land Clearing, Inc., 2008 WL 4888825, *4 (S.D. Fla. 2008). 55 Fed. R. Civ. P. 35(a)(1). Mattel, Inc. v. Rand Intern. Leisure Products, Ltd., 2008 WL 4826320, *6 (W.D. N.Y. 2008) 56 1993 WL 696697 (plaintiff in New York case to be deposed in New Zealand). 57 http://travel.state.gov/law/info/judicial/judicial_688.html. 58 http://travel.state.gov/law/info/judicial/judicial_2510.html 59 See P & D Intern. v. Halsey Pub. Co., 672 F. Supp. 1429, 1435, 5 U.S.P.Q.2d 1133 (S.D. Fla. 1987) (rejecting foreign party's forum non-conveniens argument because foreign parties subject to discovery by letters rogatory). 60 Popular Imports, Inc. v. Wong's Intern. Inc., 166 F.R.D. 276 (E.D. N.Y. 1996) (illegality of depositions in China not raised until after evidence collected).
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court may permit discovery by letters rogatory pursuant to Rule 28(b) prior to determining whether dismissal is appropriate.61 In weighing forum non conveniens arguments in intellectual property actions, the Second Circuit has expressed optimism regarding this discovery device: any difficulties that the Court might encounter regarding witnesses whose attendance the Court is unable to compel can most likely be resolved by the use of the deposition testimony or letters rogatory.62 Conversely, federal courts may by statute render aid to foreign and international tribunals and to litigants before such tribunals.63 Assertions of copyright in tape recordings as a ground for resisting requests in aid of an Irish defendant in a criminal proceeding were rejected by the Seventh Circuit.64 Defenses of lack of reciprocity, lack of ultimate admissibility of evidence, and a failure to seek letters rogatory from the foreign tribunal were rejected as defenses to an action commenced in the United States by a party litigant in a Canadian proceeding seeking discovery pursuant to 28 U.S.C.A. 1782.65

VIII. Duty to supplement disclosure and sanctions for failure to disclose

Sanctions for failure to disclose are governed by Rule 37 of the Federal Rules of Civil Procedure. Such sanctions may be severe and may include attorney's fees, defenses precluded, or evidence excluded.66 In Encore Entertainment, LLC v. Kiddesigns, Inc.,67 the court entertained a motion to bar evidence of license agreements pursuant to Rule 37 in a copyright action due to a party's failure to correct deposition testimony that such licenses did not exist that the party subsequently learned was false. Quoting Rule 37, the court noted: A party that without substantial justification fails to disclose information required by Rule 26(a) or 26(e)(1), or to amend a prior response to discovery as required by Rule 26(e)(2), is not, unless such failure is harmless, permitted to use as evidence at a trial, at a hearing, or on a motion any witness or information not so disclosed. In addition to, or in lieu of this sanction, the court on motion and after affording an opportunity to be heard, may impose other appropriate sanctions .68 In considering the motion, the court noted the duty to supplement disclosure of responses made pursuant to Rule 26: A party who has made a disclosure under subdivision (a) [of Rule 26] or responded to a request for discovery with a disclosure or response is under a duty to supplement or correct
Costello Pub. Co. v. Rotelle, 670 F.2d 1035, 1041, 212 U.S.P.Q. 811, 1981-2 Trade Cas. (CCH) &p;64352, 32 Fed. R. Serv. 2d 1053 (D.C. Cir. 1981) (discussing good faith effort to obtain evidence by letters rogatory on remand); 2003 WL 21692814 at *5 (availability of letters rogatory relevant in deciding whether plaintiff's chosen forum is inconvenient). 62 Overseas Programming Companies, Ltd. v. Cinematographische Commerz-Anstalt, 684 F.2d 232, 235 (2d Cir. 1982). 63 28 U.S.C.A. 1782 64 McKevitt v. Pallasch, 339 F.3d 530, 31 Media L. Rep. (BNA) 2141, 61 Fed. R. Evid. Serv. 1398 (7th Cir. 2003). 65 John Deere Ltd. v. Sperry Corp., 754 F.2d 132 (3d Cir. 1985). 66 Fed. R. Civ. P. 37. 67 Encore Entertainment, LLC v. KIDdesigns, Inc., 2005 WL 2249897 (M.D. Tenn. 2005) 68 Encore Entertainment, LLC v. KIDdesigns, Inc., 2005 WL 2249897 (M.D. Tenn. 2005) (quoting Fed. R. Civ. P. 37).
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the disclosure or response to include information thereafter acquired if ordered by the court or in the following circumstances: (1) A party is under a duty to supplement at appropriate intervals its disclosures under subdivision (a) if the party learns that in some material respect the information disclosed is incomplete or incorrect and if the additional or corrective information has not otherwise been made known to the other parties during the discovery process or in writing. With respect to testimony of an expert from whom a report is required under subdivision (a)(2)(B) the duty extends both to information contained in the report and to information provided through a deposition of the expert . (2) A party is under a duty seasonably to amend a prior response to an interrogatory, request for production, or request for admission if the party learns that the response is in some material respect incomplete or incorrect and if the additional or corrective information has not otherwise been made known to the other parties during the discovery process or in writing.69 In rejecting the motion to preclude the evidence, the court found that the missing information that contradicted the deposition testimony was made available to the adversary prior to the close of discovery. The court found that where the evidence was disclosed, there was no corresponding duty to supplement deposition testimony, and that the licenses could be relied on as evidence.70 In Home Design Services, Inc. v. Hibiscus Homes of Florida, Inc.,71 the court excluded a party's expert report that was purportedly offered as rebuttal evidence, which Rule 26 requires to be served within 30 days following the disclosure that it rebuts.72 Finding the expert's report to contain testimony that contained rebuttal, but also went far beyond the scope of rebuttal, and that the report was submitted 77 days after the court's scheduling order without substantial justification, the court excluded the portion of the expert testimony that was not rebuttal.73 In Point Productions A.G. v. SONY Music Entertainment, the court granted Sony's motion to preclude the entirety of an expert's testimony and struck affidavits submitted in support of a motion.74 In rejecting an expert's second report, purportedly offered in rebuttal, the court opined: . [The expert's new testimony] is a revisionist theory never before offered in this 10 year old case. To accept the contention that the affidavits merely support and initial position when they in fact expound a wholly new and complex approach designed to fill a significant and logical gap in the first report would eviscerate the purpose of the expert disclosure rules.75 In rejecting the expert's second report, the court noted the unfairness to Sony--[n]early all

Encore Entertainment, LLC v. KIDdesigns, Inc., 2005 WL 2249897 (M.D. Tenn. 2005) (quoting Fed. R. Civ. P. 26(e)). 70 Encore Entertainment, LLC v. KIDdesigns, Inc., 2005 WL 2249897 (M.D. Tenn. 2005). 71 Home Design Services, Inc. v. Hibiscus Homes of Florida, Inc., 68 Fed. R. Evid. Serv. 528 (M.D. Fla. 2005). 72 Fed. R. Civ. P. 26(a)(2)(B). 73 Home Design Services, Inc. v. Hibiscus Homes of Florida, Inc., 68 Fed. R. Evid. Serv. 528 (M.D. Fla. 2005). 74 Point Productions A.G. v. Sony Music Entertainment, Inc., 2004 WL 345551 (S.D. N.Y. 2004). 75 Point Productions A.G. v. Sony Music Entertainment, Inc., 2004 WL 345551 (S.D. N.Y. 2004).

69

of the new submissions contain factual claims never before placed in evidence ...76 A less harsh result for failure to disclose is found in Winfield Collection, Ltd. v. Sun Hill Industries, Inc.77 In that matter, rather than granting a motion to strike evidence, the court reopened discovery where there was a late disclosure of witness identities and testimony to permit the adversely affected party the fair opportunity to conduct limited discovery into those issues. Rule 37 authorizes the court to sanction a recalcitrant party by entering an order: (1) deeming the matter which is the subject of the discovery request established for the purposes of the action; (2) prohibiting the offending party from supporting or opposing designated claims or defenses, or from introducing designated matters into evidence; or (3) striking out pleadings, or parts thereof, dismissing the action in whole or in part, or granting a default judgment.78 Entry of the default judgment is not mandatory upon plaintiffs request in the court has discretion to require some proof of the facts that must be establish in order to determine liability.79

IX. Requests for admissions in copyright litigation

Requests for admissions are governed by Rule 36 of the Federal Rules of Civil Procedure. Requests for admissions may be served on the adversary any time after the initial Rule 26(f) conference.80 Requests for admissions simply ask the adversary to admit the truth of any discoverable matter that relate to statements or opinions of fact or of the application of law to fact, including the genuineness of any documents described in the request.81 Copies of documents should be served with the requests for admissions unless copies have already been provided to the adversary or made available for inspection and copying.82 Requests for admissions are a powerful tool and are often overlooked by litigants. Requests for admissions have the effect of shifting the burden of attorney's fees and expenses to the party who refuses to admit something that is later proven. Requests for admissions must be responded to in a detailed fashion. Early service of requests for admissions may greatly reduce the cost and burdensomeness of discovery by clarifying what factual or legal issues are truly at stake. Any matter admitted is deemed conclusively established for the purposes of the litigation unless a motion to withdraw the admission is timely made. Case law is replete with examples of attorneys responding to requests for admissions in an evasive or cavalier fashion or not at all.83 On a motion to determine the sufficiency of responses to requests for admissions, inadequate responses or a failure to respond results in the matter being deemed admitted.84 Prior to issuing a
76 77

Point Productions A.G. v. Sony Music Entertainment, Inc., 2004 WL 345551 (S.D. N.Y. 2004). Winfield Collection, Ltd. v. Sun Hill Industries, Inc., 2002 WL 1009571 (E.D. Mich. 2002). 78 Tangorre v. Mako's, Inc., 2002 WL 206988 (S.D. N.Y. 2002). 79 Apple Computer Inc. v. Micro Team, 2000 WL 1897354 (N.D. Cal. 2000). 80 Fed. R. Civ. P. 36. 81 Fed. R. Civ. P. 36(a). 82 Fed. R. Civ. P. 36(a). 83 See, e.g., U2 Home Entertainment, Inc. v. Lai Ying Music & Video Trading, Inc., 2005 Copr. L. Dec. P 28999, 2005 WL 1231645 (S.D. N.Y. 2005), motion for stay pending appeal denied, 2007 WL 747794 (S.D. N.Y. 2007) and judgment aff'd in part, vacated in part, 245 Fed. Appx. 28 (2d Cir. 2007) (imposing liability based on failure to respond to requests for admissions). 84 Fed. R. Civ. P. 36(a).

casual denial, an attorney should be aware of the consequences:85 [w]here a matter is not admitted, [t]he answer shall specifically deny the matter or set forth in detail the reasons why the answering party cannot truthfully admit or deny the matter. A denial shall fairly meet the substance of the requested admission, and when good faith requires that a party qualify an answer or deny only a part of the matter of which an admission is requested, the party shall specify so much of it as is true and qualified or deny the remainder. And answering party may not give lack of information or knowledge as a reason for failure to admit or deny unless the party states that the party has made reasonable inquiry and that the information known or readily obtainable by the party is insufficient to enable the party to admit or deny. A party who considers that a matter of which admission has been requested presents a genuine issue for trial may not, on that ground alone, object to the request; the party may, subject to the provisions of Rule 37(c), deny the matter or set forth reasons why the party cannot admit or deny it. Under Rule 37, which governs sanctions to be imposed for failures to respond properly to discovery requests an evasive or incomplete disclosure, answer, or response is to be treated as a failure to disclose, answer, or respond.86 The importance of requests for admissions as an evidentiary tool is highlighted in Jorgensen v. Epic/Sony Records.87 In analyzing whether a copyright infringement plaintiff had established the defendants' access to his copyrighted works, the Second Circuit Court of Appeals reversed the District Court's failure to consider the defendants' response to a request for admissions that stated on limited occasions, writers, producers or musicians affiliated with Sony may have been shown some material solicited by the A&R Department at some point during 1995, 1996 and 1997 ... .88 Based in part on this admission, the Second Circuit vacated the district court's grant of summary judgment.89

On the other hand, a court may decline to impose sanctions for inadequate responses even where an attorney's response consisted of belated substantive handwritten notations on a photocopy of the requests for admissions.90 In that matter, the court excused the lateness and denied a motion for sanctions but instructed the moving party that the party could make a motion to determine the sufficiency of the responses under Rule 36(a).91 Summary judgment may be obtained based on a failure to respond to requests for admissions by submitting a certificate of service by first-class mail.92 Statutory damages under
85 86 87 88 89 90 91 92

Tangorre v. Mako's, Inc., 2002 WL 206988 (S.D. N.Y. 2002) (quoting Rule 36(a)). Tangorre v. Mako's, Inc., 2002 WL 206988 (S.D. N.Y. 2002) (quoting Rule 36(a)). Jorgensen v. Epic/Sony Records, 351 F.3d 46, 69 U.S.P.Q.2d 1067 (2d Cir. 2003). Jorgensen v. Epic/Sony Records, 351 F.3d 46, 50, 69 U.S.P.Q.2d 1067 (2d Cir. 2003). Jorgensen v. Epic/Sony Records, 351 F.3d 46, 57, 69 U.S.P.Q.2d 1067 (2d Cir. 2003). Tangorre v. Mako's, Inc., 2002 WL 206988 (S.D. N.Y. 2002). Tangorre v. Mako's, Inc., 2002 WL 206988 (S.D. N.Y. 2002). Johnson v. Tuff-N-Rumble Management, Inc., 2000 WL 1808431 (E.D. La. 2000).

17 U.S.C.A. 504 may be imposed.93 Findings of willfulness and awards of attorney's fees may be made based on such failures,94 as well as grants of injunctive relief.95 Attorneys frequently object to providing responses where requests for admissions call for conclusions of law. Rule 36 explicitly permits requests for admissions to involve both facts and law facts applied to law. In one copyright action, the requests for admissions read as follows Request No. 1: You have no factual or legal basis to support any of the counterclaims asserted against the plaintiffs ... . Request No. 2: You sustained no actual damages as a result of any of the allegations set forth in defendants' counterclaims asserted against plaintiffs ... . Request No. 3: You have no objection to the court dismissing the counterclaims previously asserted on your behalf against the plaintiffs ... in this litigation, such dismissal being with prejudice and without costs.96 The court treated the failure to respond as admissions of all three requests for admissions and granted summary judgment.97 While a party could object to a request for admissions and risk a later ruling of the court that such objection was unwarranted, an alternate procedure is to move for a protective order, a strategy that may ensure that counsel will not be perceived as evasive in hindsight and also to limit burdensome and irrelevant requests.98 Parties must also be cognizant that as discovery progresses, information may be obtained that contradicts previous admissions. Rule 36(b) permits motions to withdraw previous admissions. In one copyright case, a party's prior attorney who was upset over facing a sanctions motion for bringing the copyright infringement case made admissions too hastily with respect to the similarity of architectural plans to other plans that were in the public domain. Upon reflection, the plaintiffs realized that they were incorrect and moved 14 months later to withdraw the admissions. The court permitted the withdrawal, notwithstanding the dilatory motion. The court permitted the defendants to file a motion for fees and expenses for work occasioned by their reliance on the withdrawn admissions.99 In another copyright infringement action, on defendants' motion for summary judgment, the court granted the plaintiff's motion to withdraw the admissions and deemed the complaint amended, but granted summary judgment anyway.100

X. Protective orders and motions to compel

Johnson v. Tuff-N-Rumble Management, Inc., 2000 WL 1808431 (E.D. La. 2000). See, e.g., Nick-O-Val Music Co., Inc. v. P.O.S. Radio, Inc., 656 F. Supp. 826, 829 (M.D. Fla. 1987). 95 See, e.g., Chess Music, Inc. v. Bowman, 474 F. Supp. 184, 209 U.S.P.Q. 644 (D. Neb. 1979); Chess Music, Inc. v. Tadych, 467 F. Supp. 819, 204 U.S.P.Q. 516 (E.D. Wis. 1979). 96 Burdick v. Koerner, 179 F.R.D. 573, 575 (E.D. Wis. 1998). 97 Burdick v. Koerner, 179 F.R.D. 573, 576 (E.D. Wis. 1998). 98 See, e.g., Warner Bros., Inc. v. Multinational Products Corp., 1986 WL 1439 (S.D. N.Y. 1986) (granting protective order on grounds overbroad, irrelevant, and beyond knowledge information and belief). 99 Howard v. Sterchi, 725 F. Supp. 1572, 1581 (N.D. Ga. 1989), aff'd, 12 F.3d 218 (11th Cir. 1993). 100 Green v. Schwarzenegger, 1995 WL 874191 (C.D. Cal. 1995), order aff'd, 107 F.3d 877 (9th Cir. 1997).
94

93

It is customary, particularly in litigations involving large defendants, for the issue of stipulating to a joint protective order to arise. A joint protective order is usually agreed to between the parties to protect confidential information, particularly trade secrets, customer lists and such materials as computer source code. During the discovery process, items are generally marked confidential and must be filed under seal if they are submitted to the court. For very sensitive secrets, information may be produced for attorneys' eyes only or only to be evaluated by an independent expert who has no relationship to the parties. Although there is generally a strong presumption against sealing public documents, in the context of intellectual property, these agreements are routine and most courts will readily grant the protections that a joint protective order would have provided an adversary.101 A practitioner should stand ready to agree to reasonable restrictions based on commercial needs and to object to onerous, unreasonable or unworkable provisions. On the other hand, the existence of a protective order may be used against the party who agreed to it to show that production of, for example, a customer list, would not cause any damage.102 Finally, even if the parties agree, a court may refuse to implement sealing orders or protective orders for a wide variety of administrative, competing policy and practical reasons, including the federal government's regulations governing the method of storing and destroying case files.103 As a practical matter, ensuring that a law office complies with protective orders can pose challenges to ordinary law office procedures. For example, a client may not review documents marked attorneys' eyes only. In addition, materials marked confidential must be properly labeled and filed under seal. Generally, to accept filings under seal, the clerk will require a copy of the protective order. The case law is replete with situations where documents were accidentally filed publicly. For an attorney whose staff may not be prepared for the unusual requirements of a protective order, extra training and warnings are advisable. Failure to abide scrupulously by the terms of a protective order may lead to sanctions such as disqualifying an expert.104 Where the parties fail to agree, the party seeking protection may apply for protective order pursuant to Rule 26(c) to overcome the presumption in favor of discovery, and the party seeking the protective order must show good cause by demonstrating a particular need for protection. Rule 26(c) provides that the court may make any order which justice requires including one or more of the following: (1) that the disclosure or discovery not be had; (2) that the disclosure or discovery may be had only on specified terms and conditions, including a designation of the time or place; (3) that the discovery may be had only by a method of discovery other than that selected by the party seeking discovery;
See, e.g., Liveware Publishing, Inc. v. Best Software, Inc., 252 F. Supp. 2d 74 (D. Del. 2003) (granting protective order directing customer list to be treated as highly confidential). 102 IPC Information Systems, LLC v. Odyssey Group, Inc., 232 F.R.D. 206, 207 (S.D. N.Y. 2005) (protective order expressly contemplated disclosure of trade secrets). 103 See Alvarez Cabrera v. Trataros Const. Inc., 184 F. Supp. 2d 149, 153 (D.P.R. 2002) (discussing competing considerations and administrative burdens involved in sealing cases indefinitely). 104 See, e.g., Beam System, Inc. v. Checkpoint Systems, Inc., 42 U.S.P.Q.2d 1461, 1997 WL 364081 (C.D. Cal. 1997).
101

(4) that certain matters not be inquired into, or that the scope of the disclosure or discovery be limited to certain matters; (5) that discovery be conducted with no one present except persons designated by the court; (6) that a deposition, after being sealed, be opened only by order of the court; and (7) that a trade secret or other confidential research, development, or commercial information not be revealed or be revealed only in a designated way; and that the parties simultaneously file specified documents or information enclosed in sealed envelopes to be opened as directed by the court.105 Broad allegations of harm, unsubstantiated by specific examples or articulated reasoning, do not satisfy the Rule 26(c) test.106 The burden of establishing the propriety of a protective order rests with the movant.107 The singer Bob Dylan, for example, showed that there was a strong probability of the plaintiff selling the discovery materials during the course of the litigation. In granting the protective order, the court noted that the plaintiff is free to utilize the materials in preparing and presenting this case in the judicial forum--not the forum of sensationalized media exposure A deposition may not generally be avoided by a protective order if objections to problematic questions could be raised at the deposition.108 Where overbroad discovery requests are promulgated, whether for documents, requests for admissions, interrogatories or depositions, a party may seek a protective order. A party who is adversely affected has standing to object to discovery requests served on a nonparty that will prejudice the party.109 Where a court finds that a party has alleged a personal right in information held by the nonparty, such as documents containing confidential research, development and commercial information, the court will find the objecting party to have standing.110 In Comstock, Inc. v. Conros Corporation,111 the court gave an excellent, succinct summary of the issues involved in copyright infringement litigation, and excluded all others.

While perhaps overly simplistic as this court understands a claim based on alleged copyright infringement, the issues in such an action, in the case of the photograph, are: (1) is the photograph the subject of the copyright? (2) is the plaintiff the holder of, or entitled to enforce, the copyright? (3) is the copyright valid? (4) is the accused photograph a direct copy of or substantially similar to the copyrighted photograph? (5) what actual damages has the copyright holder sustained or what additional profits has the infringer obtained by reason of the infringement? (6) is the infringement willful, so as to support an award of statutory damages pursuant to 17 U.S.C.A. 504(c)(2)?
105 106 107 108 109 110 111

Fed. R. Civ. P. 26(c). Damiano v. Sony Music Entertainment, Inc., 168 F.R.D. 485, 490, 36 Fed. R. Serv. 3d 998 (D.N.J. 1996). Damiano v. Sony Music Entertainment, Inc., 168 F.R.D. 485, 490, 36 Fed. R. Serv. 3d 998 (D.N.J. 1996). Holm v. Pollack, 2001 WL 1257728 (E.D. Pa. 2001). Comstock v. Conros Corp., 1996 WL 194268 (N.D. Ohio 1996). New Park Entertainment L.L.C. v. Electric Factory Concerts, Inc., 2000 WL 62315 (E.D. Pa. 2000). Comstock v. Conros Corp., 1996 WL 194268 (N.D. Ohio 1996).

The court limited discovery, including questions at depositions, to these discrete issues.112 Where a nonparty to an action is served with a subpoena issued by a court over 100 miles away from the nonparty's residence, the subpoena may be quashed by a local federal district court.113 Rule 45 of the Federal Rules of Civil Procedure requires attorneys issuing subpoenas to take reasonable steps to avoid imposing undue burden or expense on a person subject to that subpoena.114 In addition to the Rules of Civil Procedure, the Copyright Act provides for subpoenas to be served on Internet Service Providers (ISPs).115 Such subpoenas may not be issued to ISPs that do not store allegedly infringing material.116 Since there is no national service of process under the Copyright Act, such a subpoena may be issued only by the court in whose district the subpoena is served.117 The Copyright Act prescribes certain formalities for such subpoenas and how to obtain them from the clerk of the court.118 Courts may prescribe limitations on the use of information obtained from ISPs on ex parte applications.119 A court may grant a motion to compel disclosure of privileged information where a party has used such information as a sword rather than as a shield.120 Ordinarily, a privilege is preserved by keeping an oral communication secret or logging a document onto a privilege log and disclosing and describing the basis for the assertion of the privilege to the adversary on the privilege log.121 The work product privilege protects both fact and opinion work product.122 Where plaintiff disclosed facts gained during the work product process on its Web site, to wit: [Plaintiff] was alerted by [Defendant] employees that [Plaintiff's] software source codes were being copied and used by [Defendant] to sell products to nonprofit organizations. ... Plaintiff has been informed by Defendant's employees that, in spite of their objections, [Defendant] allegedly directed its employees to use plaintiff's trade secrets for various purposes, including developing software and interactive web sites for third parties, and other derivative works in the nonprofit sector. Employees of [Defendant] signed written
Comstock v. Conros Corp., 1996 WL 194268 (N.D. Ohio 1996). Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 218 F.R.D. 423 (D. Del. 2003). 114 Fed. R. Civ. P. 45(c)(1). 115 17 U.S.C.A. 512(h). 116 In re Subpoena To University of North Carolina at Chapel Hill, 367 F. Supp. 2d 945, 74 U.S.P.Q.2d 1661 (M.D. N.C. 2005). 117 In re Subpoena To University of North Carolina at Chapel Hill, 367 F. Supp. 2d 945, 74 U.S.P.Q.2d 1661 (M.D. N.C. 2005). 118 17 U.S.C.A. 512(h); In re Subpoena To University of North Carolina at Chapel Hill, 367 F. Supp. 2d 945, 951-952, 74 U.S.P.Q.2d 1661 (M.D. N.C. 2005). 119 BMG MUSIC, et al., Plaintiffs, v. DOES 1-203, Defendants., 2004 WL 594397 (E.D. Pa. 2004). 120 Kintera, Inc. v. Convio, Inc., 219 F.R.D. 503 (S.D. Cal. 2003). 121 Fed. R. Civ. P. 26(b)(5). 122 Kintera, Inc. v. Convio, Inc., 219 F.R.D. 503, 507 (S.D. Cal. 2003). Prior to December 1, 2010, virtually all communications between counsel and a testifying expert were discoverable. Now, Fed. R. Civ. P. 26(b)(4)(C) protects communications between counsel and an expert required to give a written report under Rule 26(a)(2)(B) except: (1) communications about the experts compensation; (2) facts or data provided by counsel that the expert considered in forming opinions; and (3) assumptions provided by counsel on which the expert relied in forming opinions.
113 112

affidavits under penalty of perjury.123 The court found that the foregoing disclosures waived the attorney work product privilege and ordered disclosure of the employee affidavits.124 The court found that the waiver did not extend to any related materials and upheld the privilege asserted in recorded conversations with employees.125 Where a party asserts a privilege, but fails to produce a privilege log, the court may order the party to produce such a log.126 When a party seeks discovery from a corporation, rather than guess at what officer of the corporation has knowledge, the deposition may be noticed pursuant to Rule 30(b)(6). This provision of the Federal Rules of Civil Procedure requires the corporation to provide a person with knowledge. This rule imposes an affirmative duty upon the business entity to prepare the selected deponent to adequately testify not only on matters known by the deponent, but also on subjects that the entity should reasonably know.127 The rule is designed to prevent business entities from bandying or the practice of presenting employees for their deposition who disclaim knowledge of facts known by other individuals within the entity.128 In copyright infringement actions, these depositions are helpful in determining the interrelationships of corporations in the chain of licensing and distribution.129 Where a defendant failed to prepare its witness to provide the requested cost calculations during discovery as required by the Rule 30(b)(6) deposition, to provide its costs during discovery, or to supplement its lack of a response in a timely fashion, the court granted the plaintiff's motion that evidence of deductible costs be stricken.130

Kintera, Inc. v. Convio, Inc., 219 F.R.D. 503, 510-511 (S.D. Cal. 2003). Kintera, Inc. v. Convio, Inc., 219 F.R.D. 503, 513 (S.D. Cal. 2003). 125 Kintera, Inc. v. Convio, Inc., 219 F.R.D. 503, 513 (S.D. Cal. 2003). 126 New Park Entertainment L.L.C. v. Electric Factory Concerts, Inc., 2000 WL 62315 (E.D. Pa. 2000). 127 Sanyo Laser Products Inc. v. Arista Records, Inc., 214 F.R.D. 496, 503 (S.D. Ind. 2003) (citations omitted). 128 Sanyo Laser Products Inc. v. Arista Records, Inc., 214 F.R.D. 496, 503 (S.D. Ind. 2003). 129 See, e.g., Sanyo Laser Products Inc. v. Arista Records, Inc., 214 F.R.D. 496, 503 (S.D. Ind. 2003) (designated witnesses may authenticate documents produced in discovery relating to relationships with affiliated corporations). 130 Universal Furniture Intern., Inc. v. Collezione Europa, USA, Inc., 599 F. Supp. 2d 648, 660, 90 U.S.P.Q.2d 1275 (M.D. N.C. 2009), judgment aff'd, 618 F.3d 417, 96 U.S.P.Q.2d 1137 (4th Cir. 2010), as amended, (Aug. 24, 2010).
124

123

For more on copyright litigation tactics and strategy, see Copyright Litigation Handbook (West 2012-2013). Reviews: "Until...this book there simply was no litigation-friendly guide to copyright litigation." David Wolfsohn, Woodcock Washburn "An outstanding legal resource for copyright litigators" West Allen, Lewis & Rocca "this book is a must" Kaiser Wahab, Wahab & Medenica "chockablock with insightful and practical information" Joe Petersen, Kilpatrick Stockton "great practice overview for an experienced copyright litigator" Corey Field, Ballard Spahr

PROTOCOL FOR PRODUCTION OF DOCUMENTS

1. Document Image Format. Each document shall be produced in Tagged Image File Format (TIFF), regardless of whether such documents are stored by the parties in the ordinary course of business in electronic or hard copy form. Each TIFF image file should be one page and should reflect how the source document would appear if printed to hard copy. a. Load File. The production shall include a Concordance-compatible Load File that indicates document breaks to accompany the TIFF images and additional fields as identified in Section 4 below. b. File Name. Each document image file shall be named with the unique Bates Number of the page of the document in question, followed by the extension TIF. File names should not be more than fifteen characters long or contain spaces or underscore symbols. c. Document Unitization. If a document is more than one page, the unitization of the document and any attachments and/or affixed notes shall be maintained as they existed in the original document. d. Color. Documents shall be produced as black and white TIFF images. A party shall produce color images for a reasonable number of selected documents if requested to do so in writing. 2. Searchable Text. In addition to TIFF images, each production will include text files corresponding to the TIFF files described above. a. Hard Copy Documents. Hard copy documents shall be scanned using Optical Character Recognition technology and searchable ASCII text files shall be produced (or Unicode text format if the text is in a foreign language). Each file shall be named with the unique Bates Number of the first page of the corresponding TIFF document followed by the extension .txt. b. Electronic Documents. The full text of each native electronic document shall be extracted (Extracted Text) and produced in a text file. The Extracted Text shall be provided in searchable ASCII text format (or Unicode text format if the text is in a foreign language) and shall be named with the unique Bates Number of the first page of the corresponding TIFF document followed by the extension .txt. 3. Production Media. Documents shall be produced on external hard drives or readily accessible computer or electronic media (the Production Media). 4. Metadata. For all Electronic Documents, an ASCII text file shall be produced setting forth the Metadata Fields listed in Appendix A. For the avoidance of doubt, a party is not obligated to produce metadata from a document if metadata does not exist in the document, or if the

metadata is not machine extractable. For redacted Electronic Documents, metadata fields must be produced only to the extent such fields will not divulge redacted information. 5. Request for Native Production. All Microsoft Excel, Access and PowerPoint files should be produced natively. All native files must be slip sheeted with a TIFF placeholder.

APPENDIX A METADATA FIELD BEGBATES DESCRIPTION Beginning Bates number assigned to each document. Ending Bates number assigned to each document. Beginning Bates number assigned to the group of documents to which the parent document and any attachment documents are associated. Ending Bates number assigned to the group of documents to which the parent document and any attachment documents are associated The Date Modified of the document formatted as follows: MM/DD/YYYY with leading zeros as appropriate (e.g., 06/07/2009).1 Document type as identified by metadata associated with the native document indicating the application that created the native document (e.g., Google Docs, Microsoft Word 6.0, Gmail, Outlook Email, etc.). The title, subject, or filename, in order of preference, of the document or email. The document author or originator of the email message. The recipient of any document or email as reflected in the metadata associated with the document. Names of copied recipients of any document or email as reflected in the metadata associated with the document.

ENDBATES

BEATTACH

ENDATTACH

DATEMODIFIED

DOCTYPE

TITLE

AUTHOR

RECIPIENT

CC

Unless otherwise agreed upon in writing and in advance, no party is representing that the DATEMODIFIED field is a correct historical date. While this is true of all metadata, it is particularly pertinent in the case of the DATEMODIFIED field because the value of the field can be easily and inadvertently changed, e.g., when transferring documents from one computer to another.

METADATA FIELD BCC

DESCRIPTION Names of recipients who received blind copies of any document or email as reflected in the metadata associated with the document. Name of the individual whose custodial file contained the document. Name of custodians whose exact copies of the document were removed through Horizontal Deduplication. Only used when Horizontal Deduplication is implemented. The Date Sent of the document (if applicable) or email message formatted as follows: MM/DD/YYYY with leading zeros as appropriate (e.g., 06/07/2009). The Date Received of the document (if applicable) or email message formatted as follows: MM/DD/YYYY with leading zeros as appropriate (e.g., 06/07/2009). The Time Sent of the document (if applicable) or email message formatted as follows: HH:MM AM or HH:MM PM (as appropriate) with leading zeros as appropriate (e.g., 01:15 AM). The Time Received of the document (if applicable) or email message formatted as follows: HH:MM AM or HH:MM PM (as appropriate) with leading zeros as appropriate (e.g., 01:15 AM).

CUSTODIAN

CUSTAPPEND

DATESENT

DATERECEIVED

TIMESENT

TIMERECEIVED