Phoenix Technologies Ltd. v. VMware, Inc.

          ORDER ON VMWARE'S MOTION TO COMPEL Re: Dkt. No. 79

          DONNA M. RYU UNITED STATES MAGISTRATE JUDGE

         In this copyright infringement case, Defendant VMware, Inc. ("VMware") moved to compel in camera review and production of documents withheld by Plaintiff Phoenix Technologies Ltd. ("Phoenix") upon its assertion of attorney-client and work product privileges. [Docket No. 79.] On April 14, 2016, following a hearing, the court granted VMware's motion in part, and ordered Phoenix to submit for in camera review documents withheld solely on the basis of the work product doctrine. [Docket No. 92 (Minute Order).] Having reviewed the documents in camera, the court now enters the following order on VMware's motion to compel production.

         I. FACTUAL BACKGROUND

         A. Phoenix's Allegations in This Lawsuit

         Phoenix filed this copyright infringement and breach of contract case against VMware in March 2015. Phoenix alleges that it is a pioneer in the computing industry, and that its BIOS (Basic Input/Output System) programs have "played a key part in personal computers" for over 30 years. Compl. ¶ 2. VMware is a software company. It provides virtualization software that allows a user to "create one or more ‘virtual machines' that run on a single physical computer." Compl. ¶ 24. In 1998, the parties entered into a master license agreement ("MLA") in which Phoenix licensed its BIOS programs to VMware subject to express limitations. The parties amended that agreement several times, most recently in 2003 and 2005. The 2003 and 2005 amendments were "Fully Paid-Up Licenses, " also known as perpetual or "all you can eat" licenses. Gonzalez Decl., March 10, 2016 ¶ 11. In 2005, VMware had two types of virtualization products-a desktop product and server products. Phoenix concedes that the license allows VMware to use the Phoenix BIOS in VMware's desktop product, but claims that the license does not allow VMware to use the BIOS in VMware's server products.

         Phoenix alleges that VMware has used and continues to use the licensed programs beyond the agreed limitations. It claims that VMware's use of the programs infringes Phoenix's copyrights in its BIOS programs and constitutes a breach of the license agreement. Compl. ¶¶ 3, 5, 6, 8.

         B. VMware's Motion to Compel In Camera Review

         Phoenix withheld over 1, 700 documents from production on the grounds that they constitute attorney work product and/or attorney-client privileged communications. VMware filed a motion arguing that Phoenix improperly asserted privilege as to 203 of these documents.

         On April 14, 2016, following a hearing, the court partially granted VMware's motion for in camera review, holding that VMware had presented facts "sufficient to support a reasonable, good faith belief that in camera inspection [could] reveal evidence that information in the materials is not privileged." In re Grand Jury Investigation, 974 F.2d 1068, 1075 (9th Cir. 1992). Accordingly, the court exercised its discretion to conduct an in camera review of documents withheld by Phoenix solely on the basis of the work product doctrine. The court ordered Phoenix to re-review documents withheld on that basis, to withdraw any assertion of work product protection that was not substantially justified, and to submit for in camera review any remaining documents for which it continued to assert work product protection. The court denied VMware's motion with respect to documents withheld on the basis of attorney-client privilege, finding that the parties had not adequately met and conferred regarding those documents. [Docket No. 95 (Apr. 14, 2016 Hr'g Tr.) at 7.] Therefore, the only documents currently at issue are those withheld by Phoenix solely on the basis of work product protection.

         Phoenix lodged the documents for which it continues to assert work product protection. In a cover letter to the court, it indicated that it has withdrawn its work product claim as to seven documents.

         Phoenix asserts that the documents at issue in this motion are entitled to work product protection because they were created in anticipation of this lawsuit. VMware counters that they are business-related documents that were not prepared exclusively for litigation, i.e., that they served a "dual purpose." VMware argues that the documents would have been prepared with or without the prospect of litigation and thus are not protected work product. See Visa U.S.A., Inc. v. First Data Corp., No. C-02-1786 JSW (EMC), 2004 WL 1878209, at *6 (N.D. Cal. Aug. 23, 2004) (describing dual purpose document analysis; citing In re Grand Jury Subpoena, Mark Torf/Torf Envt'l Mgmt, 357 F.3d 900, 906-10 (9th Cir. 2003)).

         C. Facts Relevant to VMware's Motion

         According to VMWare, after investment management firm Marlin Equity purchased Phoenix, it directed Phoenix's "Collections Task Force" ("CTF") to collect unpaid royalties from Phoenix customers. The three members of Phoenix's CTF are Cindy Lopez, Senior Director of Contracts and Compliance; Brian Stein, CFO; and Brigitte Paje, an order operations specialist. The CTF reports to Phoenix's CEO Rich Geruson. According to Lopez, as part of the CTF's work, Phoenix sent out letters to hundreds of customers threatening audits if they did not verify payment of all royalties due under their contracts. As a result of their efforts, the CTF entered into a number of new deals and collected millions of dollars from their customers. Gonzalez Decl. Ex. B (Lopez Dep.) 62, 165-66, 117-20, 116, 120-21; Ex. C at 6 (May 2014 report to Marlin Equity). Stein testified that Phoenix successfully reached a business resolution through negotiations with all of its customers except VMware. Gonzalez Decl., March 31, 2016 ("Supp. Gonzalez Decl."), Ex. L (Stein Dep) at 110. This included a business resolution with "Customer A"^[1] for several million dollars. Gonzalez Decl. Ex. C.

         As previously noted, Phoenix asserts that VMware's license allows use of the Phoenix BIOS in VMware's desktop product only. Phoenix contends that it was unaware that VMware was using its BIOS in server products until October 2014, when a Phoenix engineer, Jonathon White, made the discovery.^[2] Phoenix produced an email chain that begins on October 9, 2014, in which White emailed Lopez and Matthew Durbin, Vice President of Sales. The email discussed VMware's use of the Phoenix BIOS and asked, "What sort of agreement did we have on VMware on this? Are we collecting royalties?" The email chain that followed contains comments such as "maybe [VMware] got a heckuva deal" on their 2005 perpetual license, as well as Durbin's comment, "I smell money." After numerous emails about the details of VMware's license, Lopez emailed Stein, who is a fellow CTF member, stating that this was "[a]nother potential lead for unreported royalties." Gonzalez Decl. Ex. F (unredacted White email chain).^[3] According to Lopez, following the White email chain, she had further discussions with White and Durbin about VMware's license. Lopez Decl., March 24, 2016, ¶ 2. On October 15, 2014, Durbin informed Lopez that he had contacted VMware to discuss the matter, and despite "several attempts to discuss the issue . . . VMware declined to speak with [them]." Id. at ¶¶ 3-5.

         Lopez states that on November 10, 2014, she consulted Lauren Segal, Phoenix's Interim General Counsel, about "the dispute with VMware." According to Lopez, after that date, and prior to Phoenix's February 2015 retention of Cooley LLP as outside litigation counsel in this lawsuit, Segal "provided direction and guidance relating to Phoenix's investigation and analysis of VMware's use of Phoenix's BIOS." Id. at ¶¶ 6, 7; Segal Decl., March 24, 2016, ¶ 9. Lopez declared that she consistently provided information to Segal resulting from the investigation and analysis, and coordinated communication with other Phoenix employees at Segal's direction and with her guidance. Lopez Decl. at ¶ 7.

         Segal states that she began providing legal advice to Phoenix "in connection with its investigation and analyses relating to its dispute with VMware" around November 10, 2014, and that starting on November 14, 2014, she "continuously provided legal advice and direction to Phoenix regarding the licensing dispute." Segal Decl. at ¶¶ 2, 3. According to Segal, she "was involved in Phoenix's preparation of documents regarding the dispute with VMware, and reviewed most of the documents created by Phoenix, " although she does not identify any specific documents on Phoenix's privilege log with which she was involved or that she reviewed. Id. at ¶ 3. Segal states that on November 14, 2014, after VMware's "last minute cancellation" of a meeting with Phoenix, she "made sure all future communications with VMware would include Phoenix's legal department, " and that she "believed it was unlikely that Phoenix and VMware would informally resolve" their dispute. Id. at ¶ 4.

         On November 14, 2014, with Segal's assistance, Lopez prepared and sent a letter under her own signature to VMware setting forth Phoenix's position that VMware's use of BIOS did not comply with the terms of its license. Lopez Decl. ¶ 8 Ex. 3. On the same date, Lopez informed Durbin in an email that the "letter should be sent from legal . . . since this is now a legal matter." Id. at ¶ 9, Ex. 4. VMware responded to Phoenix's November 14, 2014 letter on December 2, 2014. Lopez Decl. at ¶ 10, Ex. 5. Its counsel set forth the response to Phoenix's assertion that VMware was not in compliance with the MLA. Counsel wrote, "[a]ssuming that there were any merit to Phoenix's claim (which there is not), such claim would nevertheless be barred . . . even if it could muster a valid claim (which it cannot), Phoenix would be legally prohibited from bringing such a claim because it substantially delayed in raising the issue." Id. Segal asserts that the tone of VMware's December 2, 2014 letter and VMware's "continued refusal to provide information that Phoenix had requested relating to its use of Phoenix's BIOS reaffirmed her earlier belief that this matter would not likely be resolved informally outside of litigation." Segal Decl. ¶ 5. ...