United States District Court, N.D. California
ORDER GRANTING IN PART DEFENDANT/COUNTERCLAIMANT
OPTIREV, LLC'S MOTION TO COMPEL PRODUCTION OF DOCUMENTS
RE: DKT. NO. 45.
ILLSTON United States District Judge.
17, 2016, the Court held a hearing on
defendant/counterclaimant OptiRev, LLC's motion to compel
production of certain documents and for costs incurred. For
the reasons set forth below, the motion is GRANTED in part.
11, 2016, defendant/counterclaimant OptiRev, LLC filed a
motion to compel production of certain documents and for
costs incurred. As stated in its reply, OptiRev requests that
VinterActive be required to obtain the complete record from
the Copyright Office, including applications for copyright,
deposited works, registrations, and relevant correspondence.
Dkt. 47 at 4:27, 3:26-27.
complaint, VinterActive alleges, inter alia, claims
for copyright infringement of website codes and content it
produced for OptiRev. In its answer and counterclaim, OptiRev
asserts numerous affirmative defenses and counterclaims which
place the ownership and validity of the alleged copyrights at
issue. OptiRev alleges, inter alia, that OptiRev
and/or its clients are the authors and owners of the website
content, that numerous versions of the websites and code
exist, and that the code is not copyrightable. OptiRev
contends that the documents it seeks are necessary to
ascertain the authenticity of VinterActive's ownership
November 9, 2015, OptiRev requested three broad categories of
documents from VinterActive: (1) copies of "all
copyright applications, registration forms, registration
certificates . . . made with the United States Copyright
Office that relate to the subject matter of this litigation,
" (2) copies of "all documents, from May 2015
through and including the date of production, that
memorialize, refer, or pertain to any communication between
[VinterActive] on one hand, and The United States Copyright
Office on the other, which relate to the subject matter of
this litigation, " and (3) copies of "all copyright
. . . deposits made with the United States Copyright Office
that relate to the subject matter of this litigation."
Dkt. 45 at 8-9.
states that it repeatedly requested copies of the exact
applications and deposited works from VinterActive, and that
VinterActive says that these are in the possession of its
former counsel. In lieu of the requested documents,
VinterActive says it produced "the copyright
applications and the files provided by VinterActive for
uploading into the system, " "copyright
registrations that have been issued, "
"correspondence with the Copyright Office in regards to
the transfer of files and the copyright registrations, "
and a "privilege log of the work product created for
Early Neutral Evaluation." Dkt. 46 at 9:10-14.
Specifically, VinterActive produced printouts from the
Copyright Office website with the content of the applications
and deposited works, a letter from VinterActive's counsel
to the Copyright Office requesting transfer of access from
former to current counsel, emails from the Copyright Office
confirming registration of the codes, and a privilege
log for work product including correspondence with the
Copyright Office in regards to file transfers and
registrations. See Dkt. 45 at 11-12.
asserts that VinterActive "may not have produced all of
the applications (e.g., supplementary applications), the
correct deposited works, and all correspondence with the
Copyright Office." Dkt. 47 at 3:25-27. OptiRev believes
that the printouts of the copyright applications are
incomplete due to missing information including the category
of copyright claimed under 17 U.S.C. § 102, the date of
publication, the nature of the work, the nature of the
authorship, and whether the work was derivative. OptiRev also
notes discrepancies between the printed applications and
online registrations. OptiRev submits that the content of the
application for the Presidio Inn website does not match its
online registration information. For example, the online
version includes the "Type of Work" and
"Authorship" / "Basis of Claim, " both of
which are absent from its respective printout. Dkt. 45 at
11:13-16. Additionally, the Copyright Office website lists
"2013" as the "Date of Creation, "
whereas the printout lists this date as "2012."
Id. at 11:16-17. VinterActive's papers do not
explain these discrepancies, although at the hearing counsel
stated that the discrepancies were due to an amendment to the
application. OptiRev also asserts that VinterActive has not
explained how it determined that the applications submitted
to the Copyright Office by its former counsel were the ones
"that were purportedly provided to him by [the
client]." Dkt. 47 at 4:8-9.
responds that "numerous failed attempts were made to
obtain VinterActive's files from [former counsel], "
but provides no further details. Dkt. 46-1 at ¶ 5; Dkt.
47 at 4:14. VinterActive states that it did not request
copies of each document from the Copyright Office due to
"significant expense, " but VinterActive states that
the documents it produced are the same as those filed by its
former counsel with the Copyright Office. Dkt. 46-1 at ¶
11; Dkt. 46 at 8:5-6. VinterActive says that the deposited
materials it produced are "the same materials provided
for the copyright applications, and these were the same
materials that were uploaded in the electronic
application." Dkt. 46 at 8:5-10.
OptiRev believes that VinterActive has not produced all
correspondence with the Copyright Office. VinterActive claims
that any further communications with the Copyright Office are
privileged as work product because they were prepared for
Early Neutral Evaluation. OptiRev submits that VinterActive
waived any privilege when it disclosed the information to a
third party (the Copyright Office). Alternatively, OptiRev
contends that VinterActive waived the privilege when it
submitted responses past their initial deadline on December
14, 2015. While OptiRev granted a conditional extension to
VinterActive until December 31 provided that it receive all
responses and documents on that date, it claims the extension
was void for lack of confirmation and because VinterActive
failed to send the documents.
scope of discovery extends to any "nonprivileged matter
that is relevant to any party's claim or defense and
proportional to the needs of the case." Fed.R.Civ.P.
26(b)(1). The work product doctrine, a form of privileged
matter, extends to "documents and tangible things that
are prepared in anticipation of litigation or for trial by or
for another party." Fed.R.Civ.P. 26(b)(3)(A). However,
documents prepared for litigation may be discovered if
"the party shows that it has substantial need for the
materials to prepare its case and cannot, without undue
hardship, obtain their substantial equivalent by other
means." Fed.R.Civ.P. 26(b)(3)(A)(ii). Although courts
mandate monetary sanctions when granting a motion to compel
against the party whose "conduct necessitates the
motion, " courts can limit their imposition where
"circumstances make an award of expenses unjust."
Court finds that exact copies of the applications, deposited
works, registrations, and correspondence are relevant to both
VinterActive's claims and OptiRev's counterclaims.
See Fed. R. Civ. P. 26(b)(1). It appears that
VinterActive has made good faith, though unsuccessful,
efforts to obtain these documents from its former counsel.
Because VinterActive's former counsel, who filed the
applications at issue, has failed to respond to
VinterActive's requests, combined with the fact that
there are discrepancies between the documents produced by
VinterActive and the registrations, the Court finds it
appropriate to order VinterActive to obtain the complete file
from the Copyright Office. Additionally, to the extent that
any correspondence between VinterActive and the Copyright
Office was prepared in anticipation of settlement, the Court
finds that any protection offered by work product is overcome
by necessity. See Fed. R. Civ. P. 26(b)(3)(A)(ii).
VinterActive is ordered to obtain the files because,
according to counsel, the cost will be considerably less for
VinterActive to obtain them, than it would be for OptiRev to
do so. Under the circumstances, however, and because the
complete file will assist both sides in achieving a fair
resolution of this action, it is appropriate that the cost of
obtaining the materials from the Copyright Office be split,
50/50, between the parties. The Court further finds that
monetary sanctions are unjustified as VinterActive displayed
good faith in its beliefs and supplementary responses.
See Fed. R. Civ. P. 37(5)(A)(iii).
Court GRANTS OptiRev's motion to compel production of the
Copyright Office record and DENIES OptiRev's request for
monetary sanctions. The Court orders VinterActive to obtain
and produce the complete file, ...