PER CURIAM.
Affirmed.
Not final until disposition of timely filed motion for rehearing.
also claims that it answered Interrogatory No. 3, subpart 3 in the manner that it did because Plaintiff "always claims copyright protection for the overall form as well as the arrangement and composition of spaces and elements as expressed in the design, . . . responding that it claims protection of everything not utilitarian is the clearest expression of this."
The Court disagrees. The clearest expression by Plaintiff that it is, as it says, claiming "copyright protection for the overall form as well as the arrangement and composition of spaces and elements as expressed in the design,"
is for Plaintiff to simply state that it is making such a claim. Indeed, this is the exact information that Interrogatory No. 3, subpart 3 seeks from Plaintiff.
Design Basics, LLC's Resp. to Strawn Defs.' Mot. to Compel (ECF No. 34) at 4.
Id.
The Court will therefore grant Defendants' Motion with respect to Interrogatory No. 3, subpart 3, and require Plaintiff to, without objection, revise its answer to clearly and simply state whether it is only claiming a protectable interest in the overall form of the design, or whether it is also claiming a protectable interest in the arrangement and composition of spaces and elements in the design.
2. Interrogatory No. 3, subpart 4
Interrogatory No. 3, subpart 4 states,
[I]f you are claiming a protectable interest in the arrangement and composition of spaces and elements in the design, state with particularity the exact nature of such protectable interest, including a written description as well as a graphic depiction of each allegedly infringed design that expressly delineates each and every allegedly protectable aspect of the design.
Plaintiff objected to Interrogatory No. 3, subpart 4 on the grounds that it is "vague, confusing and unintelligible; over burdensome, over broad, and harassing; irrelevant, immaterial and not reasonably calculated to lead to admissible evidence." Plaintiff then answered the interrogatory subject to these objections, stating, "Defendants' plans are substantially similar to Plaintiff's plans in too many ways to have been the product of independent creation." Plaintiff then referred Defendants to graphic comparisons with numbers showing the locations of the similar elements the accused plans have to the copyrighted plans.
Id.
Id.
In its response brief, Plaintiff appears to offer a new objection that asking a party to create documents is objectionable on its face. Plaintiff never asserted this objection when answering Interrogatory No. 3, subpart 4, and Plaintiff fails to demonstrate to the Court why there is good cause to consider this untimely objection. The Court therefore deems the objection waived.
Brackens, 2007 WL 2122428, at *1; Cotracom, 189 F.R.D. at 662.
With respect to the objections that Plaintiff did timely assert, Plaintiff did not satisfy the specificity requirement for these objections. As Defendants point out, Plaintiff must go beyond its boilerplate objections and "show specifically how, despite the broad and liberal construction afforded the federal discovery rules, each question is overly broad, burdensome, or oppressive by submitting affidavits or offering evidence revealing the nature of the burden." Plaintiff failed to make this showing. Instead, Plaintiff made a conclusory argument in its response brief that it "objected properly that the interrogatory was vague, confusing, unintelligible, over burdensome, over broad and harassing." Plaintiff also claims it "went above and beyond the call of duty" by informing Defendants that their plans are substantially similar to Plaintiff's plans in too many ways to have been the product of independent creation and by providing Defendants with graphic overlays in response to the request for graphic comparisons. In the Declaration of Carl Cuozzo in support of Plaintiff's objections, Mr. Cuozzo simply declared, "[O]ther than the graphic comparisons already provided to Defendants . . ., I don't know and don't understand what additional information Defendants want Design Basics to provide."
Allianz, 2005 WL 44534, at *2 (citations omitted).
Design Basics, LLC's Resp. to Strawn Defs.' Mot. to Compel (ECF No. 34) at 4.
Id.
Decl. of Carl Cuozzo of Design Basics, LLC to Pl.'s Resp. to Defs.' Mot. to Compel, attached as Ex. 11 to Design Basics, LLC's Resp. to Strawn Defs.' Mot. to Compel (ECF No. 34).
Although Plaintiff believes that it went above and beyond the call of duty in answering Interrogatory No. 3, subpart 4, at no point did Plaintiff satisfy its duty of providing the requisite specificity in support of its objections. Instead, Plaintiff made conclusory claims that it properly objected and that it did not understand the interrogatory, which do not specifically show how Interrogatory No. 3, subpart 4 is vague, confusing, unintelligible, unduly burdensome, over broad, or harassing. The Court therefore overrules each of Plaintiff's objections to Interrogatory No. 3, subpart 4. The Court thus grants Defendants' Motion with respect to Interrogatory No. 3, subpart 4.
3. Interrogatory No. 3, subpart 5
Interrogatory No. 3, subpart 5 states, "[I]f you are claiming a protectable interest in the arrangement and composition of spaces and elements in the design, state with particularity the role you (or your predecessor(s)-in-interest) had in the selection and arrangement of those spaces and elements such that you believe it warrants protection under 17 U.S.C. § 101 et seq." Plaintiff objected to Interrogatory No. 3, subpart 5 on the grounds that it is "over burdensome, over broad, and harassing; irrelevant, immaterial and not reasonably calculated to lead to admissible evidence." Plaintiff then provided the following answer to the interrogatory, subject to these objections: "[E]mployees of DBLLC and/or its predecessors-in-interest determined the selection and arrangement of all spaces and elements in each of its copyrighted works." Defendants argue that Plaintiff failed to provide the requisite specificity for its boilerplate objections, and therefore ask the Court to overrule the objections.
Pl.'s Objections and Resps. to Defs.' First Set of Interrogs. attached as Ex. D to Mem. in Supp. of Defs.' Mot. to Compel (ECF No. 32).
Id.
Id.
As an initial matter, the Court notes that Plaintiff does not reassert its over broad and immaterial objections in its response brief. Accordingly, the Court deems these objections abandoned and will only consider Plaintiff's objections that Interrogatory No. 3, subpart 5 is unduly burdensome, harassing, and irrelevant. a. Unduly Burdensome
When ruling on a motion to compel, the Court will consider only those objections that have been timely asserted and then relied upon in response to the motion to compel. See Moses v. Halstead, 236 F.R.D. 667, 672 n. 8 (D. Kan. 2006); Cardenas v. Dorel Juvenile Group, Inc., 232 F.R.D. 377, 380 n. 15 (D. Kan. 2005). Objections initially raised but not relied upon in a response to a motion to compel will be deemed abandoned. See Moses, 236 F.R.D. at 672 n. 8; Cardenas, 232 F.R.D. at 380 n. 15.
Plaintiff has the burden to support its unduly burdensome objection. In doing so, Plaintiff must "show not only `undue burden or expense,' but also [] show that the burden or expense is unreasonable in light of the benefits to be secured from the discovery." Plaintiff argues that the interrogatory is unduly burdensome because Plaintiff "was purchased last summer, and due to the severe downturn in the economy, none of the principals and very few of the employees who were there when the plans at issue were created, remain." Plaintiff further argues that because these individuals are no longer with the company, it "would be difficult, if not impossible" for Plaintiff to discern the role of the predecessors-in-interest in the selection and arrangement of spaces and elements. Plaintiff submits the Declaration of Carl Cuozzo in support of this argument.
Manning v. General Motors, 247 F.R.D. 646, 654 (D. Kan. 2007).
Id.
Design Basics, LLC's Resp. to Strawn Defs.' Mot. to Compel (ECF No. 34) at 5.
The Court has considered Plaintiff's arguments and concludes that Plaintiff has not provided the Court with sufficient information to conclude that the interrogatory is unduly burdensome. Plaintiff does not adequately support its claim that it would be difficult or impossible to get the information requested by the interrogatory. Are there two former employees who were involved in the selection and arrangement of spaces and elements or were there forty? Why are these individuals difficult or impossible to find? Has Plaintiff ever attempted to locate these individuals? Without additional information to support Plaintiff's claims, the Court cannot agree that Interrogatory No. 3, subpart 5 is unduly burdensome.
b. Irrelevant and Harassing
Plaintiff claims that Interrogatory No. 3, subpart 5 is harassing and irrelevant because "all the plans at issue in this case were registered with the copyright office prior to the infringements alleged" and therefore "the originality of the plans is not at issue." According to Plaintiff, because originality of the plans is not at issue, the role its former employees had in the selection and arrangement of spaces and elements is irrelevant and to seek such information is harassing.
Id.
The Court disagrees. It is well settled that in order to establish copyright infringement" two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." The validity of a copyright depends upon originality. "Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity." The Supreme Court has explained, "The mere fact that a work is copyrighted does not mean that every element of the work may be protected. Originality remains the sine qua non of copyright; accordingly, copyright protection may extend only to those components of a work that are original to the author."
Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) (citation omitted).
Id.
Id. at 345 (citation omitted)
Id. at 348 (citations omitted).
Here, Defendants have asserted an affirmative defense that "Plaintiff does not own or have valid copyright(s) in any of the material, works, or elements of works at issue in this action as such works, material, or elements are not original and/or contains or constitute uncopyrightable subject matter, concepts and/or ideas." Thus, it appears to the Court that originality is an issue in this case. The Court therefore concludes that the interrogatory is not, as Plaintiff argues, harassing.
Defs.' Am. Answer and Countercls. (ECF No. 12) at 6.
As for the relevance of the interrogatory, this Court has explained the standard for relevance on numerous occasions. Fed.R.Civ.P. 26(b)(1) provides that "[p]arties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense. . . ." Relevancy is broadly construed during the discovery phase, and a request for discovery should be considered relevant if there is "any possibility" that the information sought may be relevant to the claim or defense of any party. When the discovery sought appears relevant on its face, the party resisting the discovery has the burden to establish that the requested discovery does not come within the scope of relevance as defined under Rule 26(b)(1), or is of such marginal relevance that the potential harm occasioned by discovery would outweigh the ordinary presumption in favor of broad disclosure. Conversely, when the relevancy of the requested discovery is not readily apparent, the party seeking the discovery has the burden to show the relevancy of the request.
Fed.R.Civ.P. 26(b)(1).
Cardenas, 232 F.R.D. at 382; Owens v. Sprint/United Mgmt. Co., 221 F.R.D. 649, 652 (D. Kan. 2004).
Johnson v. Kraft Foods N. Am., Inc., 238 F.R.D. 648, 653 (D. Kan. 2006); Cardenas, 232 F.R.D. at 382; Owens, 221 F.R.D. at 652.
Johnson, 238 F.R.D. at 653; Cardenas, 232 F.R.D. at 382; Owens, 221 F.R.D. at 652.
The Court finds that Interrogatory No. 3, subpart 5 is relevant on its face. Defendants have asserted an affirmative defense that Plaintiff does not own or have valid copyrights because they lack originality, and Interrogatory No. 3, subpart 5 seeks information directly related to the originality of the copyrights at issue in this case. Plaintiff thus has the burden of establishing that the requested information does not come within the scope of relevance or that it is of such marginal relevance that the potential harm caused by the discovery outweighs the presumption in favor of broad disclosure. Plaintiff has not met this burden. Plaintiff's argument that the plans were registered with the copyright office before the infringements alleged does not demonstrate that information related to originality of the copyrights is not relevant. One of the elements in a copyright infringement case is the validity of the copyrights, which Defendants have challenged based on the alleged lack of originality. The issue of originality is therefore very relevant. In addition, as discussed above, Plaintiff has not demonstrated that the burden imposed by the discovery outweighs the benefits of the discovery. Plaintiff has not explained why it is so difficult to contact its former employees to learn the answer to Interrogatory No. 3, subpart 5. The Court thus overrules all of Plaintiff's objections to Interrogatory No. 3, subpart 5. As such, the Court grants Defendants' Motion with respect to Interrogatory No. 3, subpart 5.
4. Interrogatory No. 3, subpart 6
Interrogatory No. 3, subpart 6 asks Plaintiff to state "each and every portion of the allegedly copyrighted design that you claim is a standard feature not entitled to protection." Plaintiff objected to this interrogatory on the grounds that it is "over burdensome, over broad, and harassing; irrelevant, immaterial and not reasonably calculated to lead to admissible evidence." Plaintiff then answered the interrogatory, subject to its objections, as follows:
Pl.'s Objections and Resps. to Defs.' First Set of Interrogs. attached as Ex. D to Mem. in Supp. of Defs.' Mot. to Compel (ECF No. 32).
Id.
It is impossible to isolate and categorize any particular part of an architectural work as a `standard feature' when all the design elements are so interrelated and inextricably intertwined. Therefore [Plaintiff] believes there are no `standard features' not entitled to protection by virtue of their interrelation with all other parts of its works.
Plaintiff provides the same answer in its response brief as well as the Declaration of Carl Cuozzo in support of its response brief. Plaintiff takes the position that there are no "standard features" not entitled to protection.
Defendants argue that this response is incorrect and contrary to copyright law. However, regardless of what the applicable copyright law may be on this issue, the interrogatory asks Plaintiff to state every portion of the copyrighted plans that Plaintiff claims is a standard feature not entitled to protection. Plaintiff answered this question — there are none. Defendants may not like the answer, but the answer fairly meets the question posed by the interrogatory. The Court therefore need not concern itself with the objections because Plaintiff has answered the interrogatory. Thus, the Court denies Defendants' Motion with respect to Interrogatory No. 3, subpart 6.
5. Interrogatory No. 4, subpart 4
Interrogatory No. 4 asks Plaintiff to "[i]dentify with particularity each and every instance in which you believe Defendants have infringed any alleged copyright of yours." Subpart 4 asks Plaintiff to state whether Plaintiff is "claiming infringement of the overall form of the design of [its] alleged copyright, or whether [Plaintiff is] also claiming infringement of a specific arrangement and composition of spaces and elements in the alleged copyright." Plaintiff objected to Interrogatory No. 4, subpart 4 on the grounds that it is "vague, ambiguous and unintelligible, over burdensome, over broad, and harassing; irrelevant, immaterial and not reasonably calculated to lead to admissible evidence because there are no claims to the `design of any copyright,' nor does any copyright have any arrangement or composition of spaces or elements." Plaintiff then answered the interrogatory subject to its objections,
Id.
Id.
Id.
[I]f Defendants meant to use `works' instead of `copyrights' in this interrogatory, then please see DB 1310 — 1319 for comparisons. It is impossible to isolate and categorize any particular part of an architectural work as a `standard feature' when all the design elements are so interrelated and inextricably intertwined. Therefore, [Plaintiff] believes there are no `standard features' not entitled to protection by virtue of their interrelation with all other parts of its works. [Plaintiff] claims protectable interest in everything not utilitarian.
In support of this answer, Plaintiff points the Court to the Declaration of Carl Cuozzo. According to Mr. Cuozzo, Plaintiff objected to this interrogatory because the question did not make any sense. Mr. Cuozzo claims that Interrogatory No. 4, subpart 4 does not make any sense because Plaintiff is not making any claims to the design of any copyright and because copyrights do not have arrangements or compositions of spaces or elements. Plaintiff therefore made a guess that Defendants meant to use the term "works" instead of "copyrights" and went on to answer the interrogatory.
Again, it appears to the Court that Plaintiff fairly answered the interrogatory. Although Defendants disagree with Plaintiff's answer, the interrogatory asked Plaintiff what it is claiming and Plaintiff answered that question. The Court therefore need not examine the objections made to the interrogatory. Defendants' Motion with respect to Interrogatory No. 4, subpart 4 is denied.
6. Interrogatory No. 4, subpart 5
Interrogatory No. 4, subpart 5 states,
[I]f you are claiming infringement of the arrangement and composition of spaces and elements in the design, state with particularity the exact nature of such alleged infringement, including a written description as well as a graphic depiction of each allegedly infringing design that expressly delineates each and every portion of the design that allegedly infringes.
Plaintiff objected to Interrogatory No. 4, subpart 5 on the grounds that it is "vague, confusing and unintelligible; over burdensome, over broad, and harassing; irrelevant, immaterial and not reasonably calculated to lead to admissible evidence." Plaintiff then answered the interrogatory subject to these objections, "Defendants' plans are substantially similar to Plaintiff's plans in too many ways to have been the product of independent creation. [Plaintiff] claims protectable interest in everything not utilitarian." Plaintiff also referred Defendants to the same graphic comparisons with numbers showing the locations of the similar elements the accused plans have to the copyrighted plans.
Id.
Id.
In its response brief, Plaintiff claims that this interrogatory is identical to Interrogatory No. 3, subpart 4, and thus refers the Court to its arguments concerning Interrogatory No. 3, subpart 4 in support of its objections and answer to Interrogatory No. 4, subpart 5. There are two problems with this argument.
First, the two interrogatories are not identical. Interrogatory No. 3 asks Plaintiff to describe the copyrights it claims Defendants have infringed. Subpart 4 asks Plaintiff that if it is claiming a protectable interest in the arrangement and composition of the spaces and elements in the design, then to state with particularity the nature of that protectable interest, including a description of the allegedly infringed design. Interrogatory No. 4, on the other hand, asks Plaintiff to identify those instances in which Plaintiff believes Defendants infringed its copyrights. Subpart 5 asks Plaintiff that if it is claiming infringement of the arrangement and composition of spaces and elements in the design, then to state the exact nature of such alleged infringement, including a description of the allegedly infringing design. Thus, Interrogatory No. 3 seeks information concerning Plaintiff's claims about its copyrights that Defendants allegedly infringed, and Interrogatory No. 4 seeks information concerning Plaintiff's claims about Defendants' alleged infringement and Defendants' allegedly infringing designs.
Second, the Court has already overruled each of Plaintiff's objections to Interrogatory No. 3, subpart 4 because Plaintiff failed to satisfy the specificity requirement for its objections. Thus, reliance on its argument in support of Interrogatory No. 3, subpart 4 will not help Plaintiff with its objections and answers to Interrogatory No. 4, subpart 5.
Consequently, the Court finds that Plaintiff has not satisfied the specificity requirement for its objections to Interrogatory No. 4, subpart 5. The Court therefore overrules each of Plaintiff's objections to Interrogatory No. 4, subpart 5, and grants Defendants' Motion with respect to Interrogatory No. 4, subpart 5.
VI. INTERROGATORY NO. 11
Defendants ask the Court to order Plaintiff to fully answer Interrogatory No. 11, which reads, "State, in detail, the full extent and all aspects of the business relationship between you and each of the named Defendants in this action." Plaintiff did not object to Interrogatory No. 11, but rather answered, "Our records show that Strawn Contracting Inc. had its first contact with Design Basics in 1992. [Plaintiff] sold two house plan licenses to Strawn Contracting Inc., as well as marketing materials like yard signs and promotional artwork for some plans. Strawn Contracting Inc also became a Woman Centric Builders in early 2009."
Id.
Id.
Defendants take issue with Plaintiff's answer, arguing that it lacks the detail called for in the interrogatory. During the meet and confer process, Defendants asked for these details, including "(1) the nature of the first contact in 1992, (2) the names of the two house plan licenses referenced in the response, (3) when those licenses were sold, (4) what, specifically, the referenced `marketing materials' were, (5) what, specifically, the `yard signs' were, (6) what, specifically, was the `promotional artwork,' (7) what was meant by `some plans,' and (8) when each of these marketing materials were sold." Defendants argue that "[t]hese are basic facts regarding the nature of the prior business relationship between the parties."
Mem. in Supp. of Defs.' Mot. to Compel (ECF No. 32) at 14.
Id.
The Court disagrees. The interrogatory itself does not seek these additional facts, but rather asks Plaintiff to describe the business relationship between Plaintiff and Defendants. Plaintiff answered the interrogatory and now Defendants want to flush out Plaintiff's response and obtain additional information. Defendants are essentially asking follow-up questions, which amount to additional interrogatories. Thus, Defendants should either propound additional interrogatories or conduct a deposition to learn the answers to these follow-up questions. The Court therefore denies Defendants' Motion with respect to Interrogatory No. 11.
VII. DOCUMENT REQUESTS
Defendants also ask the Court to overrule Plaintiff's objections and order Plaintiff to fully respond to Document Request Nos. 38, 39, 43, 44, 45, and 50. As previously discussed, with respect to Document Request No. 44, Plaintiff has searched for these documents and agreed to produce the responsive documents to Defendants. The Court expects Plaintiff to produce those documents as promised. The Court will examine the remaining document requests in turn.
1. Document Request Nos. 38 and 39
Because the parties discuss these document requests together, the Court will do the same. Document Request No. 38 seeks "[t]he principal and material documents containing sales figures or other financial performance information, actual or projected, for the license, sale, development, or distribution of each of the alleged copyrights in this action." Plaintiff objected to Document Request No. 38 on the grounds that it is "over broad (no date parameter), over burdensome, and not reasonably calculated to lead to admissible evidence." Plaintiff then provided Defendants with a spreadsheet showing licensing of the plans at issue going back ten years.
Pl.'s Objections and Resps. To Defs.' Requests for Prod. attached as Ex. C to Mem. in Supp. of Defs.' Mot. to Compel (ECF No. 32).
Id.
Document Request No. 39 seeks "[t]he principal and material documents reflecting and pertaining to the licensing and profitability (both gross and net) of each of the alleged copyrights in this action." Plaintiff objected to Document Request No. 39 on the grounds that it is "over broad, over burdensome, irrelevant and immaterial; not reasonably calculated to lead to admissible evidence." Subject to these objections, Plaintiff provided Defendants a spreadsheet showing licensing revenue for the plans at issue going back ten years. The crux of the dispute between the parties with respect to Document Request Nos. 38 and 39 is whether Plaintiff should be required to search for and produce responsive documents going back further than ten years. The Court will examine Plaintiff's relevance objections first.
Id.
Id.
As the Court has already explained, relevancy is broadly construed during the discovery phase, and a request for discovery should be considered relevant if there is "any possibility" that the information sought may be relevant to the claim or defense of any party. When the discovery sought appears relevant on its face, the party resisting the discovery has the burden to establish that the requested discovery does not come within the scope of relevance as defined under Rule 26(b)(1), or is of such marginal relevance that the potential harm occasioned by discovery would outweigh the ordinary presumption in favor of broad disclosure. Conversely, when the relevancy of the
Cardenas, 232 F.R.D. at 382; Owens, 221 F.R.D. at 652.
Johnson, 238 F.R.D. at 653; Cardenas, 232 F.R.D. at 382; Owens, 221 F.R.D. at 652.
requested discovery is not readily apparent, the party seeking the discovery has the burden to show the relevancy of the request.
Johnson, 238 F.R.D. at 653; Cardenas, 232 F.R.D. at 382; Owens, 221 F.R.D. at 652.
Having reviewed Document Request Nos. 38 and 39, the Court finds the requested financial information going back more than ten years for each of the plans at issue in this case does not appear relevant. Thus, Defendants have the burden to establish the relevancy of their requests for the information going back further than ten years. Defendants argue that all documents relating to the licensing and profitability of the plans, including those going back more than ten years, are relevant to the calculation of damages, which will be based in large part on the financial history of the plans in question. Defendants argue they "should be able to consider the data from each and every time [Plaintiff] has licensed the plans in question in determining its opinion of the value of a license for those plans."
Mem. in Supp. of Defs.' Mot. to Compel (ECF No. 32) at 17.
The Court is not persuaded by Defendants that the financial information sought going back further than ten years is relevant. The Court notes that Defendants do not provide any authority to support their claim that they are entitled to financial information more than ten years old. In addition, although Defendants explain how the financial information in general is relevant, Defendants have not demonstrated how the information going back further than ten years is relevant. The Court must therefore deny Defendants' Motion with respect to the financial information requested that goes back further than ten years. The Court notes that Plaintiff has promised to provide the financial information for the last ten years, and expects Plaintiff to produce those documents as promised. However, the Court denies Defendants' Motion with respect to Document Request Nos. 38 and 39 insofar as they seek financial information that is more than ten years old, and sustains Plaintiff's relevance objection to this information.
Having sustained Plaintiff's relevance objection to the financial information sought in Document Request Nos. 38 and 39 that is more than ten years old, the Court need not address Plaintiff's remaining objections.
2. Document Request No. 43
Document Request No. 43 seeks "[t]he principal and material documents or other tangible items pertaining to, relating to, or representing Plaintiff's compliance with the Notices of Copyrights requirements, pursuant to 17 U.S.C. § 401 et seq., for each of the alleged copyrights in this action." Defendants, in their Motion, advise that they are seeking two categories of documents in response to Document Request No. 43: "(1) [Plaintiff's] internal policies and procedures regarding placing of copyright notice on its plans, and (2) documentation showing whether [Plaintiff] has in fact properly displayed such notices on each of the five plans it is accusing [Defendants] of infringing." Plaintiff objected to Document Request No. 43 on the grounds that it is "over broad and over burdensome because Plaintiff has been actively marketing these plans since they were created and registered in years 1989, 1995 and 2002; irrelevant and immaterial, as all of Plaintiff's plans at issue were created, registered and first marketed after enactment of the Boerne Convention."
Pl.'s Objections and Resps. to Defs.' Requests for Prod. attached as Ex. C to Mem. in Supp. of Defs.' Mot. to Compel (ECF No. 32).
Mem. in Supp. of Defs.' Mot. to Compel (ECF No. 32) at 18.
Pl.'s Objections and Resps. to Defs.' Requests for Prod. attached as Ex. C to Mem. in Supp. of Defs.' Mot. to Compel (ECF No. 32).
Plaintiff does not reassert its over broad or unduly burdensome objections in its response brief. Accordingly, the Court deems those objections abandoned. The only objection left for the Court to consider is Plaintiff's relevance objection.
Moses, 236 F.R.D. at 672 n. 8; Cardenas, 232 F.R.D. at 380 n. 15.
The Court concludes that the relevance of Document Request No. 43 is not readily apparent. Thus, Defendants have the burden to show how the requested information is relevant. Defendants argue that they are seeking documentation of whether Plaintiff has continuously marked its public displays of the plans at issue in this case with the "circle c" mark ((c)) or the word "copyright." While such a mark is not required by the Copyright Act, if such a mark is used then, under 17 U.S.C. § 401(d), "no weight shall be given to such a defendant's interposition of a defense based on innocent infringement in mitigation of actual or statutory damages, except as provided in the last sentence of section 504(c)(2)." Defendants therefore argue that the information sought in Document Request No. 43 is relevant to the innocent infringement defense they have asserted.
Johnson, 238 F.R.D. at 653; Cardenas, 232 F.R.D. at 382; Owens, 221 F.R.D. at 652.
17 U.S.C. § 401(d).
See Defs.' Am. Answer and Countercls. (ECF No. 12) at 6.
Plaintiff argues that the information is not relevant because it is impossible for Defendants to establish innocent infringement as Defendants previously purchased licenses for several of Plaintiff's plans and received several plan books over the years that were laden with warnings about infringement. Although the finder of fact may ultimately agree with Plaintiff's contentions, the Court concludes that Defendants have established that the information requested is relevant to its defense of innocent infringement, which is an issue in this case that has not yet been decided. The Court therefore overrules Plaintiff's relevance objection and grants Defendants' Motion with respect to Document Request No. 43.
3. Document Request Nos. 45
Document Request No. 45 seeks "[t]he principal and material documents reflecting and pertaining to any charges or claims or copyright infringement asserted by [Plaintiff] against any other person." As discussed above, Plaintiff has already agreed to produce documents responsive to Document Request No. 44, which seeks the principal and material documents pertaining to Plaintiff's claims of copyright infringement concerning the alleged copyrights involved in this action. However, it appears that Document Request No. 45, which seeks the principal and material documents pertaining to any charges or claims of copyright infringement asserted by Plaintiff against any other person, is still in dispute. Plaintiff objected to Document Request No. 45 on the grounds that it is over broad, unduly burdensome, and seeks irrelevant documents.
Pl.'s Objections and Resps. to Defs.' Requests for Prod. attached as Ex. C to Mem. in Supp. of Defs.' Mot. to Compel (ECF No. 32).
The Court will consider Plaintiff's over broad objection first. "Unless the request is overly broad on its face, Plaintiff, as the party resisting discovery, has the burden to support its objection." The Court has reviewed Document Request No. 45 and concludes that the request is over broad on its face. The request is not limited by a time frame or by a sufficiently specific topic. Instead, it seeks documents on any copyright claims or charges made by Plaintiff at any time against any person. The Court will therefore sustain Plaintiff's over broad objection.
Allianz, 2005 WL 44534, at *2 (citation omitted).
Plaintiff also argues that the requested information is not relevant. The Court agrees. The relevance of claims and charges concerning copyrights not involved in this action is not readily apparent, and the Court concludes that Defendants have not shown how this information is relevant. The Court therefore sustains Plaintiff's relevance objection. In doing so, the Court need not consider Plaintiff's unduly burdensome objection.
The Court thus denies Defendants' Motion with respect to Document Request No. 45, but does expect that Plaintiff will provide documents responsive to Document Request No. 44 as promised.
4. Document Request No. 50
Document Request No. 50 seeks "[a]ll documents supporting [Plaintiff's] contention that each of the alleged copyrights in this action pertaining to certain home plans and designs were published on [Plaintiff's] `Internet web site, in various books and in periodicals such as home buyer guides,' as alleged in paragraph 8 of [Plaintiff's] Complaint." Plaintiff objected to Document Request No. 50 on the grounds that it is "vague, ambiguous and unintelligible, as Plaintiff has never contended that any `copyrights pertaining to certain home plans and designs were published.'" Plaintiff further objected that "if what Defendants seek production of are copies of all web pages, books and periodicals where the works at issue (thus far) in this case were published, it is objectionable as being over broad and over burdensome, because Plaintiff has been actively marketing these plans since they were created and registered during the previous two decades." Plaintiff then went on to answer the document request, subject to its objections, as follows, "Plaintiff is still searching for and identifying and saving the URL's where the subject works appeared on the Internet for the past several years, and will produce them as well as the books, periodicals and sales brochures responsive by supplementing this request when they are all located."
Pl.'s Objections and Resps. to Defs.' Requests for Prod. attached as Ex. C to Mem. in Supp. of Defs.' Mot. to Compel (ECF No. 32).
Id.
Id.
Id.
Plaintiff does not reassert any of its objections to Document Request No. 50 in its response brief. Accordingly, the Court deems the objections abandoned. Instead of reasserting its objections, Plaintiff, for the first time, argues that the requested information is confidential and therefore states that it will produce the information once a protective order is entered in this case. However, Plaintiff did not timely assert this confidentiality objection in response to Document Request No. 50, and Plaintiff has not demonstrated good cause for the Court to consider this objection now. The Court therefore finds that Plaintiff waived this objection. However, even if Plaintiff had not waived this objection, as Defendants point out, the document request does not seek any confidential information, but rather specifically asks for published information, i.e., information made available to the public. As such, the requested information cannot be considered confidential. The Court therefore grants Defendants' Motion with respect to Document Request No. 50.
Moses, 236 F.R.D. at 672 n. 8; Cardenas, 232 F.R.D. at 380 n. 15.
Brackens, 2007 WL 2122428, at *1; Cotracom, 189 F.R.D. at 662.
VIII. EXPENSES
Fed.R.Civ.P. 37 governs the payment of expenses incurred in making a motion to compel. Rule 37(a)(5)(C) provides that if a motion to compel is granted in part and denied in part, as is the case here, "the court may, after giving an opportunity to be heard, apportion the reasonable expenses for the motion." The Court notes that it is not required to hold a hearing before making such an award. Although the Court must afford the party an "opportunity to be heard," the Court may consider the issue of expenses "on written submissions." Here, Defendants expressly requested in their Motion that they be awarded attorney's fees and expenses. Plaintiff filed a response brief and had an opportunity to address the issue of expenses. The Court therefore finds that the parties had sufficient "opportunity to be heard" within the meaning of Rule 37(a)(5)(A).
Fed.R.Civ.P. 37(a)(5)(C).
Bradley v. Val-Mejias, No. 00-2395-GTV, 2001 WL 1249339, at *11 n. 7 (D. Kan. Oct. 9, 2001) (citing Fed.R.Civ.P. 37(a) advisory comm. n.).
As discussed at length above, Plaintiff abandoned several of its objections after Defendants filed their Motion. In addition, Plaintiff changed its position on several matters, including (1) Plaintiff's objection to the use of the terms "principal" and "material" to describe the information and documents sought by Defendants, (2) Plaintiff's refusal to clarify its use of the phrases "plan modifications" and "the reports" in its answer to Interrogatory No. 8, and (3) Plaintiff's refusal to produce any documents responsive to Document Request No. 44. In light of these changed positions and abandoned objections, the Court finds it appropriate to require Plaintiff to pay half of the expenses, including attorney's fees, that Defendants incurred in filing the Motion. To assist the Court in determining the proper amount of the award, Defendants' counsel shall file, by November 30, 2010 , an affidavit itemizing the fees and expenses that Defendants incurred in bringing the Motion. Plaintiff shall have until December 10, 2010 to file a response to the affidavit. Thereafter, the Court will issue an order specifying the amount of the award and the time of payment. IT IS THEREFORE ORDERED that Defendants' Motion to Compel (ECF No. 31) is granted in part and denied in part as set forth herein.
IT IS FURTHER ORDERED that Plaintiff shall serve, without asserting any objections, its responses to the interrogatories and requests for production, and produce all requested documents, as ordered by the Court herein, on or before December 3, 2010 .
IT IS FURTHER ORDERED that Plaintiff shall pay half of the expenses, including attorney's fees, Defendants incurred in filing the Motion. Defendants shall file by November 30, 2010 an affidavit itemizing the reasonable attorney's fees and expenses they incurred in connection with filing the Motion. Plaintiff's response to the affidavit shall be filed on or before December 10, 2010 .
IT IS SO ORDERED.
Dated in Kansas City, Kansas on this 17th day of November 2010.