[Tentative] ORDER ON BROOKHAVEN'S MOTION FOR LEAVE TO FILE FOR RECONSIDERATION AND ITS MOTION TO COMMENCE AND EXPEDITE DISCOVERY [Re: Docket Nos. 188 and 189].
The opinion of the court was delivered by: Ronald M. Whyte United States District Judge
Plaintiff Brookhaven Typesetting Services, Inc. ("Brookhaven") moves: (1) for leave to file a motion for reconsideration of the court's Order on Plaintiff's Motion for Sanctions and Entry of Default Judgment dated March 22, 2005 and (2) to commence and expedite discovery. The motions are currently set for hearing on October 28, 2005. The court has reviewed the Parties' Joint Report on Meet and Confer filed May 6, 2005, conferred with John Levy, Ph.D., the court's independent expert who monitored and participated in the meet and confer, reviewed the parties' papers submitted in connection with Brookhaven's motions, and reviewed the history of this case to date. The court hereby [tentatively]: (1) denies the Motion for Leave to File for Reconsideration and (2) denies without prejudice the Motion to Commence and Expedite Discovery but as a condition sets forth further discovery obligations for Adobe.
At the Initial Case Management Conference on April 26, 2002, Adobe System, Inc. ("Adobe") challenged Brookhaven's bases for claiming copyright infringement and trade secret misappropriation and expressed concern about maintaining the confidentiality of the source code of its challenged applications in light of what it asserted were baseless claims. The court then worked out with the parties an approach that recognized these concerns, allowed the case to proceed in an orderly fashion and was designed to keep the discovery costs and burdens to both parties under control. The court ordered that the parties' outside experts review Adobe's accused source code under an appropriate protective order, compare that code to Brookhaven's copyrighted code, and report to the court whether there was any evidence of copyright infringement or trade secret misappropriation and, if so, how the evidence tended to show those wrongs. The parties were also ordered to advise the court what discovery would then be necessary to make a further or final determination of copyright infringement or trade secret misappropriation. See Order Setting Forth Protocol for Production and Examination of Parties' Respective Source Codes dated November 20, 2002.
Unfortunately, the anticipated orderly preparation and evaluation of the case have been frustrated by an acrimonious relationship between the parties and counsel and disputes concerning production. Brookhaven contends, and Adobe disputes, that Adobe was required to produce "runable" code and not just compilable code, that Adobe's failure to produce source code for the dynamic link libraries (" DLL") called for in the Adobe applications means that complete and compilable code was not even produced , and that Adobe was responsible for the deletion of data from the hard drive of Brookhaven's expert. As a result of these and other disagreements between the parties, Brookhaven made a motion for sanctions and the entry of a default judgment against Adobe. The court heard the motion and found that Brookhaven's misconduct accusations, were, in large part, the result of misunderstandings and not the result of any attempt by Adobe to frustrate the process. See Order on Plaintiff's Motion for Sanctions and Entry of Default Judgment dated March 22, 2005.
In an effort to finally resolve the issue of whether Adobe had produced complete and compilable code, the March 22, 2005 Order required that the parties' experts meet and confer and that the court's expert, Dr. Levy, monitor the meet and confer. Unfortunately, that meet and confer did not resolve the disputes between the parties and has resulted in the current motions by Brookhaven.
Brookhaven continues to complain that Adobe has failed to produce compilable source code for the subject versions of InDesign. Adobe contends, and the court agrees, that a comparison of Adobe's and Brookhaven's source codes can be accomplished without compilation. However, the ability to compile, build and run the codes would facilitate an examination of any similarities between Brookhaven's and Adobe's codes. That, in part, is why the court's November 20, 2002 Order required that the source code produced "must be in complete and compilable state." The Order defines "source code" as including any and all necessary libraries, resource files, project files, or other files."
Brookhaven asserts that it needs the source code for the dynamic link libraries ("DLLs") called for in the InDesgin source code. The court agrees that such source codes are necessary for Brookhaven to do an efficient and complete analysis. InDesign related libraries are integral parts of InDesign's functionality and source code expression to the extent that the source code for these libraries has the same origin (author, programmer or development group) as the remaining, non-library source code. Contents of such DLLs are not functionally distinct, in general, from subroutines, functions, data structures and classes defined in the main program. Therefore, the court orders Adobe to produce for Brookhaven the source code of any dynamic link libraries (DLLs) which are the property of Adobe and were designed for utilization in InDesign 1.0, 1.5.0, 1.5.2 and 2.0 or are known by Adobe to have been developed by someone else (e.g. Aldus) as part of InDesign 1.0, 1.5.0, 1.5.2 and 2.0. However, this order does not require production of DLLs that provide generic functions for use in various application programs.
The court recognizes that it is a significant benefit in evaluating the structure and function of programs to have access to the running program operating live on a computer. Further, it is helpful to witness the process by which a program is compiled, linked and loaded before its execution begins. Brookhaven's analysis could be facilitated by assistance from Adobe's experts. Therefore, Adobe is to continue to make their expert available for technical consultation to Brookhaven's expert in putting together, if possible, runable versions of InDesign 1.5.2 and InDesign 2.0, if Brookhaven so desires and pays fifty percent of the fees and costs of Adobe's expert for such assistance.
Brookhaven complains about the alleged failure of Adobe to produce certain source code, "make files" and DLLs and the destruction of such files. The court believes that Adobe has in good faith attempted to comply with the court's orders. However, to insure that there is no misunderstanding among Adobe, Brookhaven and the court, Adobe is to provide a declaration from a knowledgeable representative of Adobe that all source code and "make files" in its possession for InDesign 1.0, 1.5.0, 1.5.2 and 2.0 have been produced, and provide a declaration from a knowledgeable representative of Adobe that no source code, "make files," or DLLs developed for InDesign 1.0, 1.5.0, 1.5.2 and 2.0 have been discarded by Adobe since the commencement of Brookhaven's lawsuit or, if any such code has been discarded, when it was discarded and why.
Brookhaven complains that Adobe caused the destruction of data on the hard drive of the computer of Brookhaven's expert, Dr. Henderson. This unfortunate event resulted from Dr. Henderson's failure to look for requirements related to environmental variables. Also, unfortunately, the creators of the Adobe scripts did not announce in earlier comments that the scripts depended on environmental variables. Although the mistakes resulting in this loss of data are unfortunate, the court finds no evidence of any intent by Adobe to cause the loss, nor any basis to sanction it as a result of the loss. Further, assistance from Adobe's expert should prevent similar mistakes in the future and expedite the building and running of InDesign 1.5.2 and 2.0, if Brookhaven so desires.
After Adobe provides the material in its possession or under its control required by this order, it shall certify in writing that it has done so. Then, within 60 days, each party shall provide a report stating whether there is any evidence of copyright infringement or trade secret misappropriation and, if so, how the evidence tends to show those wrongs. The parties shall also advise the court what discovery is necessary to make a further or final determination of copyright infringement or trade secret misappropriation. The obligation to do a textual analysis of source code or other initial copyright infringement or trade secret misappropriation analysis is not dependent on Brookhaven's being able to build a runable version of InDesign 1.0, 1.5.2 or 2.0.
Although the court by this order requires further production from Adobe, the court does not find that Adobe has acted other than in good faith in its efforts to produce "complete and compilable" code. DATED:
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