United States District Court, N.D. California
MARIA-ELENA JAMES, UNITED STATES MAGISTRATE JUDGE.
the Court are two discovery letter briefs submitted by the
parties. Having considered the parties' arguments and the
relevant legal authority, the Court ORDERS
production of the 2017 version of Searchmetrics' SugarCRM
database, and all underlying documents referenced therein,
for the following reasons.
October 17, 2017, Plaintiff BrightEdge Technologies Inc.
(“BrightEdge”) and Defendants Searchmetrics GmbH
and Searchmetrics, Inc. (collectively
“Searchmetrics”) filed two Joint Discovery
Dispute Letters with the Court. In the first letter,
BrightEdge requested that the Court compel Searchmetrics to
produce “all documents concerning sales, offers to
sell, and attempted sales of Searchmetrics' products
and the accused products”, given the information's
“relevance to infringement, willfulness, and
damages.” Dkt. No. 169. In the second letter,
BrightEdge asked that the Court compel production of
Searchmetrics' SugarCRM database, as it is
“relevant to willfulness, non-obviousness, and
damages.” Dkt. No. 170. Searchmetrics asked that the
Court deny both of BrightEdge's requests, stating that
the information sought is not relevant. Dkt. Nos. 169, 170.
Searchmetrics also argued that the first request is
“overbroad, overly burdensome, [and] violates the
relevancy and proportionality requirements of Fed.R.Civ.P.
26(b)(1)”, and expressed concerns that fulfilling the
second request would result in a violation of German privacy
October 26, 2017, the Court held a hearing regarding this
discovery dispute. October 26, 2017 Minute Entry, Dkt. No.
November 2, 2017, the Superior Court of California for the
County of Santa Clara issued an order on a similar discovery
dispute in the parties' trade secrets case.
BrightEdge Technologies, Inc. v. Gabriel Martinez, et
al., Case No. 2013-1-CV-256794 (Santa Clara County
Superior Court). The Superior Court ordered Searchmetrics to
produce the 2015 version of its SugarCRM database, given
production would be made subject to the adequately protective
Confidentiality Order already in place in that case.
may obtain discovery regarding any nonprivileged matter that
is relevant to any party's claim or defense and
proportional to the needs of the case . . . . Information
within this scope of discovery need not be admissible in
evidence to be discoverable.” Fed.R.Civ.P. 26(b)(1).
“Evidence is relevant if: (a) it has any tendency to
make a fact more or less probable than it would be without
the evidence; and (b) the fact is of consequence in
determining the action.” Fed.R.Evid. 401. However,
courts must limit discovery if the information sought
“is unreasonably cumulative or duplicative, or can be
obtained from some other source.” Fed.R.Civ.P.
Second Letter Brief Regarding Production of the SugarCRM
Database (Dkt. No. 170)
should be allowed unless the information sought has “no
conceivable bearing on the case.” First Fin. Sec.,
Inc. v. Jones, 2017 U.S. Dist. LEXIS 128194, at *4 (N.D.
Cal. Aug. 11, 2017) (citation omitted). This Court has
already recognized that the requested information (contained
in Searchmetrics' SugarCRM database and the underlying
documents referenced therein) is relevant to BrightEdge's
claims of willful infringement and to the calculation of
damages in this action. Dkt. No. 56 at 5. This Court has also
recognized that this information cannot be obtained
elsewhere. Id. at 7. Additionally, at the October
26th hearing, BrightEdge stated that it is a common industry
practice to produce this kind of database in this kind of
Searchmetrics has again asserted that transmitting the
database and other related documents to a United States
company would violate German privacy law. Dkt. No. 170 at 5;
see also Dkt. No. 48. Searchmetrics alleges that the
database and related documents contain personal data, which
German law bars from being transferred “to countries
lacking the same levels of protection afforded in EU
countries [- countries such as] the United States.”
Dkt. No. 170 at 5. Still, “the party opposing discovery
has the burden of showing that discovery should not be
allowed, and also has the burden of clarifying, explaining[,
] and supporting its objections with competent
evidence.” La. Pac. Corp. v. Money Mkt. 1
Inst'l Inv. Dealer, 285 F.R.D. 481, 485 (N.D. Cal.
2012) (citations omitted); see DirectTV, Inc. v.
Trone, 209 F.R.D. 455, 458 (C.D. Cal. 2002); see
also Oakes v. Halvorsen Mar. Ltd., 179 F.R.D. 281, 283
(C.D. Cal. 1998) (citation omitted). Searchmetrics has failed
to do so. Searchmetrics has twice made this general
assertion, but has not explained why the protective order
already in place in this case would not be sufficient to
protect the private information contained in the database and
Court has already stated, even where a party seeks to prevent
disclosure of documents based on foreign law, “it is
well settled that such [foreign] statutes do not deprive an
American court of the power to order a party subject to its
jurisdiction to produce evidence even though the act of
production may violate that statute.” Societe
Nationale Industrielle Aerospatiale v. U.S. District
Court, 482 U.S. 522, 544 n. 29 (1987) (citing
Societe Internationale Pour Participations Industrielles
et Commerciales, S.A. v. Rogers, 357 U.S. 197, 204-06
(1958)). This Court previously ruled in favor of disclosure
on a similar Joint Discovery Dispute Letter in this case.
Dkt. No. 56. While related to a broader set of requests, the
requests listed in that letter included one for
Searchmetrics' SugarCRM database and the related
documents. Dkt. No. 48 at 2. In that letter, Searchmetrics
similarly asserted objections to production based on German
privacy law. However, in its order, this Court applied the
relevant balancing test (set forth in Restatement ...