Oppenheimer v. Episcopal Communicators, Inc.

THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF NORTH CAROLINA

ASHEVILLE DIVISION

CIVIL CASE NO. 1:19-cv-00282-MR

DAVID OPPENHEIMER, )

)

Plaintiff, )

)

vs. ) MEMORANDUM OF

) DECISION AND ORDER

EPISCOPAL COMMUNICATORS, )

INC., )

Defendant. )

________________________________ )

THIS MATTER is before the Court on the Defendant’s Motion to

Compel [Doc. 15].

I. BACKGROUND

On September 30, 2019, the Plaintiff David Oppenheimer (the

“Plaintiff”) filed this action against the Defendant Episcopal Communicators,

Inc. (the “Defendant”) asserting claims under the Copyright Act, 17 U.S.C.

§§ 101 et seq. and the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C.

§§ 1202, et seq. [Doc. 1]. In his Complaint, the Plaintiff alleges that the

Defendant infringed on one of his copyrights by publishing one of his

copyrighted photographs (the “Work”) on its website. [Id. at ¶ 10].

Specifically, the Plaintiff alleges the Defendant either non-willfully (Count I)

or willfully (Count II) infringed on his copyrights by publishing the Work and

violated the DMCA by removing copyright management information (“CMI”)

from the Work before publishing it (Count III). [Id. at 5-7]. On January 21,

2020, the Defendant answered the Complaint. [Doc. 8].

On March 20, 2020, the Defendant served its First Set of

Interrogatories and Requests of Production on the Plaintiff. [Doc. 16-1; Doc.

16-2]. On April 23, 2020, the Plaintiff served untimely and incomplete

responses. [Doc. 16-3; Doc. 16-4]. The Plaintiff asserted several objections,

including attorney-client privilege and numerous boilerplate objections.

[Doc. 16-3; Doc. 16-4]. The Plaintiff, did not, however, provide Defendant

with a privilege log and provided no further detail regarding the application

of the attorney-client privilege to the specific documents at issue.

On May 22, 2020, the Defendant’s counsel sent a letter to the Plaintiff's

counsel detailing issues with the Plaintiff's responses and requesting

supplemental responses. [Doc. 16-5]. The letter indicated that the

Defendant would file a motion to compel if the Plaintiff failed to supplement

his responses. [Id.]. On May 29, 2020, the parties held a meet and confer

to attempt to resolve the discovery dispute.

On June 1, 2020, the Defendant filed a Consent Motion for Protective

Order. [Doc. 13]. On June 9, 2020, the Court entered an Order granting the

Motion and entered a Protective Order. [Doc. 14].

On June 8, 2020, the Plaintiff provided supplemental responses to the

Defendant’s requests. [Doc. 16-9; 16-10]. Those responses produced

additional information for some requests and maintained objections on

others. [Id.].

On June 19, 2020, the Defendant filed the present Motion, asking the

Court to compel the Plaintiff provide full and complete responses to the

Defendant’s Interrogatories and Requests for Production (“RFPs”) and to

order the Plaintiff to pay the Defendant’s fees and costs incurred in bringing

the Motion. [Doc. 16]. On July 6, 2020, the Plaintiff filed a response. [Doc.

17]. On July 13, 2020, the Defendant replied. [Doc. 18].

II. STANDARD OF REVIEW

Rule 26 of the Federal Rules of Civil Procedure provides, in pertinent

part, as follows:

Parties 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, considering the importance of the issues at

stake in the action, the amount in controversy, the

parties’ relative access to relevant information, the

parties’ resources, the importance of the discovery in

resolving the issues, and whether the burden or

expense of the proposed discovery outweighs its

likely benefit. Information within this scope of

discovery need not be admissible in evidence to be

discoverable.

Fed. R. Civ. P. 26(b)(1).

Under Rule 37 of the Federal Rules of Civil Procedure, “a party may

move for an order compelling disclosure or discovery.” Fed. R. Civ. P.

37(a)(1). “[T]he party or person resisting discovery, not the party moving to

compel discovery, bears the burden of persuasion.” Kinetic Concepts, Inc.

v. ConvaTec Inc., 268 F.R.D. 226, 243 (M.D.N.C. 2010). The decision to

grant or deny a motion to compel is generally an issue within the broad

discretion of the trial court. See Lone Star Steakhouse & Saloon, Inc. v.

Alpha of Va., Inc., 43 F.3d 922, 929 (4th Cir. 1995).

III. DISCUSSION

The Defendant moves to compel responses to Interrogatory 1;

Interrogatory 2; Interrogatory 3; Interrogatory 9; Interrogatory 11; RFP 3;

RFP 4; RFP 5; RFP 10; RFP 14; and RFP 15. Those discovery requests

seek roughly four types of information: (1) information and documents

related to the Plaintiff’s copyrights in the Work and other photographs,

including the Plaintiff’s prior copyright assertions, lawsuits, settlement

agreements, and licensing agreements related to aerial photography

(Interrogatories 1, 2, and 3, and RFPs 4, 5, and 14); (2) information and

documents related to the Plaintiff’s discovery of the Defendant’s alleged

infringement (Interrogatory 9 and RFP 10); (3) information and documents

regarding the Plaintiff’s alleged actual damages (Interrogatory 11 and RFP

15); and (4) representative samples of all other publications of the Work and

license, transfer, or assignments for any publications by other persons (RFP

3). [Doc. 16 at 4].

A. Copyright Assertions, Lawsuits, Settlements, and Licenses

The Defendant’s first group of discovery requests seek information and

documents related to the Plaintiff’s licensing and protection of his copyrights

and the amounts recovered from any assertions of those copyrights. The

Plaintiff objects to those requests, claiming that they are vague, ambiguous,

irrelevant to any claim or defense, overbroad, not proportionate to the needs

of the case, and overly burdensome. [Doc. 16-3 at 4; Doc. 16-4 at 5-6]. The

Plaintiff also objects that those requests seek information that is equally

accessible to the Defendant. [Id.]. The Plaintiff further objects that the

Defendant seeks information that is confidential and protected by attorney-

client, work-product, and/or investigation privilege. [Id.]. Finally, the Plaintiff

objects that the Defendant seeks copies of licenses, assignments, transfers,

and agreements that contain proprietary and confidential business

information. [Doc. 16-10 at 11]. Despite his objections, the Plaintiff disclosed

that he previously asserted his rights in the Work in Oppenheimer v. Kenney,

1:18-cv-000252 (W.D.N.C. 2018) and against Alliance of Devine Love, Inc.

[Doc. 16-9 at 4]. The Plaintiff did not provide the amounts recovered in either

instance. [Id.].

1. Boilerplate Objections

The Plaintiff’s vagueness, ambiguousness, relevance, overbreadth,

and proportionality objections are boilerplate objections. Such objections

have been declared invalid by several courts. See, e.g., Mancia v. Mayflower

Textile Servs. Co., 253 F.R.D. 354, 364 (D. Md. 2008; Barb v. Brown's Buick,

Inc., No. 1:09CV785, 2010 WL 446638, at *1 (E.D. Va. Feb. 2, 2010)

(unpublished); Hy–Ko Prods. Co. v. Hillman Group, Inc., No. 5:09MC32,

2009 WL 3258603, at *2 (E.D.N.C. Oct. 8, 2009) (unpublished); Mills v. East

Gulf Coal Preparation Co., 259 F.R.D. 118, 132 (S.D. W. Va.2009); Cappetta

v. GC Servs. Ltd. P'ship, No. 3:08CV288, 2008 WL 5377934, at *3 (E.D. Va.

Dec. 24, 2008) (unpublished). The assertion of such boilerplate objections

is grounds for overruling the Plaintiff’s objections. Kinetic Concepts, Inc. v.

ConvaTec Inc., 268 F.R.D. 226, 247 (M.D.N.C. 2010).

In any event, those objections have little applicability here. The Plaintiff

does not even try to explain what is vague about a request for copies of his

past licensing and settlement agreements. The Plaintiff also does not clarify

what is vague or ambiguous about asking for a list of his previous lawsuits

or the instances where he has asserted copyrights against a third-party. As

such, the Plaintiff’s vagueness and ambiguousness objections are without

merit.

Further, the relevance objections are also without merit. The Plaintiff’s

photography revenue, prior copyright assertions, and prior copyright

infringement lawsuits are relevant to the statutory damages at issue in this

matter. See Oppenheimer v. Holt, No. 1:14-CV-000208-MR, 2015 WL

2062189, at *2 (W.D.N.C. May 4, 2015) (Reidinger, J.) (stating that “the

revenue lost by the copyright holder” and “the conduct and attitude of the

parties” are relevant for the purposes of determining statutory damages

under the Copyright Act) (citation omitted). As such, instances where the

Plaintiff has asserted his rights in his copyrights, the amounts recovered from

those assertions, and the Plaintiff’s licensing agreements are all relevant

here. Likewise, other courts have held that settlement agreements are

relevant to the issue of damages in intellectual property cases. See Smith v.

NBC Universal, No. 06 Civ. 5350, 2008 WL 483604, at *4 (S.D.N.Y. Feb. 22,

2008) (“[E]vidence of the settlements and their amount are relevant to a

determination of the amount of statutory damages . . .”); see also Small v.

Nobel Biocare USA, LLC, 808 F. Supp. 2d 584, 586-92 (S.D.N.Y. 2011)

(finding settlement agreement relevant to royalty in patent infringement

action). As such, the settlement agreements are relevant here and can be

disclosed.

The Defendant’s requests also are not overbroad, disproportionate, or

overly burdensome. While the Plaintiff asserts that his “perceived value in

the [Work] is better shown through the quoted price for a 1-year, worldwide,

nonexclusive license which he produced in discovery[,]” [Doc. 17 at 11], the

Plaintiff does not dispute that his past recoveries, licenses, and settlement

agreements are relevant to the value of his photographs, which is the

standard for discoverability under the Federal Rules of Civil Procedure. Fed.

R. Civ. P. 26(b)(1). Moreover, the Plaintiff provides no information regarding

the number of licensing agreements he has entered, the number of

settlement agreements he has entered, or the number of lawsuits he has

filed. The Plaintiff also does not explain how a narrower request would

provide the Defendant with the relevant information that it seeks. While the

Plaintiff has disclosed that he has only asserted his copyrights in the Work

on two occasions, he does not provide any information regarding the

amounts recovered in those instances or the revenue he has made from

other photographs. In sum, the Plaintiff has not provided anything from

which the Court can conclude that the Defendant’s request is

disproportionate or overbroad.

Moreover, the Plaintiff provides no detailed information from which the

Court can determine that the Defendant’s requests are unduly burdensome.

The Plaintiff does not describe how the requested information is stored or

how easily that information can be accessed. Instead, the Plaintiff merely

claims that he is a “sole-practitioner photographer” and that it will be difficult

for him to go through all of his agreements from the last fifteen years. That

is insufficient to show any undue burden. As such, the Plaintiff’s

overbreadth, proportionality, and burden objections are without merit.

2. Equal Access Objection

The Plaintiff’s objections that the requested information is equally

accessible to the Defendant is also without merit. While it is true that

“discovery need not be required of documents of public record[,]” Kidwiler v.

Progressive Paloverde Ins. Co., 192 F.R.D. 193, 201 n.81 (N.D. W. Va.

2000), the Defendant requests all assertions of the copyright in the Work and

other photographs. The Defendant has no way of accessing the Plaintiff’s

cease and desist letters, license demands, and other non-public

communications where he asserted his copyrights. The Defendant also

requests the amounts that the Plaintiff recovered as a result of his lawsuits,

settlement agreements, and other copyright assertions. The Defendant

either has limited or no access to that information. Further, the Defendant

has no access to the Plaintiff’s licensing agreements. As such, the

Defendant does not have equal access to the requested information.

Accordingly, the Plaintiff’s equal access objection is without merit.

3. Confidentiality Objection

The Plaintiff’s objections regarding the confidentiality of the settlement

agreements are also without merit. While Federal Rule of Evidence 408 bars

the admission of settlement communications and agreements at trial for

certain purposes, “nothing in Rule 408 renders such materials privileged

against discovery.” Morgan Art Found. Ltd. v. McKenzie, No. 18-CV-4438

(BCM), 2020 WL 3578251, at *5 (S.D.N.Y. July 1, 2020). “The simple fact

that the parties to the settlement agreement agreed to its confidentiality does

not shield it from discovery.” Conopco, Inc. v. Wein, 2007 WL 1040676, at

*5 (S.D.N.Y. Apr. 4, 2007). “Simply put, litigants may not shield otherwise

discoverable information from disclosure to others merely by agreeing to

maintain its confidentiality.” DirecTV, Inc. v. Puccinelli, 224 F.R.D. 677, 684-

85 (D. Kan. 2004). As such, the confidentiality provisions in the settlement

agreements do not bar their disclosure.

The Plaintiff, however, argues that the majority of courts1 “‘considering

the issue have required the requesting party to meet a heightened standard

in deference to Federal Rule of Evidence 408 and the public policy to

encourage settlements and to uphold confidentiality provisions.’” [Doc. 17 at

10 (citation omitted)2]. The heightened standard requires “some

particularized showing of a likelihood that admissible evidence will be

generated by the dissemination of the terms of a settlement agreement.”

Bottaro v. Hatton Assocs., 96 F.R.D. 158 (E.D.N.Y. 1982). Other courts,

however, have rejected the heightened standard and treated settlement

agreements like any other material discoverable under Federal Rule of Civil

1 Although the Plaintiff asserts that the majority of courts require a heightened standard

for discovering confidential settlement agreements, it is unclear if that statement

accurately characterizes the current view. See Small, 808 F. Supp. 2d at 587 (stating

while “district courts in [the Second] Circuit have in the past disagreed as to whether

discovery of settlement agreements requires a heightened showing of relevance, the

majority view is now that no such heightened showing is required.”); Gen. Elec. Co. v. DR

Sys., Inc., No CV 06-5581(LDW)(ARL), 2007 WL 1791677, at *1 (E.D.N.Y. June 20, 2007)

(stating that “clearly the most recent view [is] that Rule 26’s relevancy standard applies

to the disclosure of settlement documents.”).

2 Although the Plaintiff attributes this quotation to Westport Ins. Corp. v. Constangy,

Brooks & Smith, LLC, No. CV 3:05-2651-JFA, 2006 WL 8446876, at *7 (D.S.C. Sept. 15,

2006), that citation is incorrect. Instead, the relevant quotation appears to be from

Cadmus Commc'ns Corp. v. Goldman, No. CIV.A.3:05CV257, 2006 WL 3359491, at *3

(W.D.N.C. Nov. 17, 2006) (“the majority of courts considering the issue have required the

requesting party to meet a heightened standard in deference to Federal Rule of Evidence

408 and the public policy to encourage settlements and to uphold confidentiality

provisions.”) (citation omitted)).

Procedure 26. See, e.g., Church Mut. Ins. Co. v. Coutu, No. 17-CV-00209-

RM-NYW, 2017 WL 11547321, at *5 (D. Colo. Aug. 22, 2017).3

When Congress drafted the Federal Rules, it specifically chose to

protect settlement agreements with limits on “the admissibility of settlement

material rather than limits on their discoverability.” In re Subpoena Issued to

Commodity Futures Trading Comm'n, 370 F. Supp. 2d 201, 211 (D.D.C.

2005) (citation omitted), aff'd in part on other grounds sub nom. In re

Subpoena Duces Tecum Issued to Commodity Futures Trading Comm'n,

439 F.3d 740 (D.C. Cir. 2006). As such, “Rule 408 is a preclusionary rule,

not a discovery rule.” Computer Assocs. Int'l, Inc. v. Am. Fundware, Inc.,

831 F. Supp. 1516, 1531 (D. Colo. 1993). Indeed, “the Rule on its face

contemplates that settlement documents may be used for several purposes

at trial, making it unlikely that Congress anticipated that discovery into such

documents would be impermissible.” In re Subpoena, 370 F. Supp. 2d at

211. Because the Federal Rules do not impose a limitation on the discovery

of relevant confidential settlement agreements, the Court will not impose a

heightened standard here.

3 The Fourth Circuit has yet to decide if the discovery of confidential settlement

agreements requires the moving party to meet a heightened standard.

Moreover, any issues associated with allowing discovery of the

confidential settlement agreements will be mitigated by the protective order

that has been entered in this case. Other courts have ordered the production

of settlement agreements where the confidentiality of those agreements will

remain protected. Allergan, Inc. v. Teva Pharm. USA, Inc., No. 2:15-CV-

1455-WCB, 2017 WL 132265, at *1 (E.D. Tex. Jan. 12, 2017) (collecting

cases). As the Fourth Circuit has explained, protective orders can help

“alleviate problems and concerns regarding both confidentiality and scope of

the discovery material produced in a particular case.” Virmani v. Novant

Health Inc., 259 F.3d 284, 288 n. 4 (4th Cir. 2001). Because a protective

order has been entered in this matter, the confidentiality of the settlement

agreements will remain protected. Accordingly, the Plaintiff’s confidentiality

objection is without merit.

4. Privilege Objection

The Plaintiff’s privilege objections4 are also without merit. Under

Federal Rule of Civil Procedure 26, a party who withholds discoverable

4 While the Plaintiff claims that the documents are protected by “attorney-client, work-

product, and/or investigation privilege[,]” [Doc. 16-9 at 2, 3, 5; Doc. 16-10 at 4, 7, 11], the

Plaintiff cites no authority to support such an “investigation privilege”. Moreover, the work-

product privilege does not apply to these documents because they do not involve the

“files or mental impressions of an attorney.” Hickman v. Taylor, 329 U.S. 495, 527 (1947).

As such, the Court will only analyze the Plaintiff’s objections based on attorney-client

privilege.

information on the ground that the information is privileged “must: (i)

expressly make the claim; and (ii) describe the nature of the documents,

communications, or tangible things not produced or disclosed—and do so in

a manner that, without revealing information itself privileged or protected, will

enable the parties to assess the claim.” Fed. R. Civ. P. 26(b)(5)(A).

Typically, this description takes the form of a privilege log. Mezu v. Morgan

State Univ., 269 F.R.D. 565, 577 (D. Md. 2010); Smith v. Café Asia, 256

F.R.D. 247, 250 (D.D.C. 2009). “A party simply cannot claim privilege and

refuse to provide a privilege log; indeed, some courts have found that doing

so results in waiver of the privilege.” Travelers Indemnity Co. v. Allied Tube

& Conduit, Corp., No. 1:08cv548, 2010 WL 272579, at * 1 (W.D.N.C. Jan.

15, 2010) (Howell, Mag. J.); Mezu, 269 F.R.D. at 577 (“a privilege log . . .

must accompany a written response to a Rule 34 document production

request, and a failure to do so may constitute a forfeiture of any claims of

privilege.”); AVX Corp. v. Horry Land Co., Inc., No. 4:07cv3299, 2010 WL

4884903, at *4 (D.S.C. Nov. 24, 2010) (“Failure to produce a timely or

sufficient privilege log may constitute a forfeiture of any claims of privilege.”).

Because the Plaintiff did not produce a privilege log as required by Rule 26,

the Plaintiff has waived his privilege claims. Even if the Plaintiff had

produced a privilege log, “courts have generally declined to recognize a

privilege that would preclude discovery for the purpose of settlements or

settlement negotiations.” Newman & Assocs. v. J.K. Harris & Co., LLC, No.

04CIV.9264(RJH)(MHD), 2005 WL 3610140, at *2 (S.D.N.Y. Dec. 15, 2005).

(citation omitted). As such, the Plaintiff’s privilege claims are without merit.

5. Business Information Objection

The Plaintiff’s objection related to the disclosure of confidential and

proprietary business information is also without merit. While the Plaintiff

claims that the disclosure of his proprietary and confidential information will

“tend to get others a competitive advantage[,]” [Doc. 16-10 at 11], he does

not claim that the Defendant is a competitor and does not otherwise explain

how giving the Defendant access to any confidential information would or

create a competitive disadvantage or threaten his business interests.

Moreover, a protective order has been entered in this case, which helps

“alleviate problems and concerns regarding both confidentiality and scope of

the discovery material produced in a particular case.” Virmani, 259 F.3d at

288 n. 4. As such, there is little risk that the disclosure of the Plaintiff’s

licensing or settlement agreements will threaten the Plaintiff’s business

interests, even if those agreements contain confidential or proprietary

information. Accordingly, the Plaintiff’s business information objection is

without merit.

B. Discovery of the Defendant’s Alleged Infringement

The Defendant’s second group of discovery requests seek information

and documents regarding the Plaintiff’s discovery of the Defendant’s alleged

infringement. The Plaintiff objects to those requests, claiming that they seek

information that is already provided in the Complaint and are unreasonably

cumulative and duplicative. [Doc. 16-9 at 8]. The Plaintiff further objects that

the Defendant’s requests call for him to marshal all his evidence in violation

of the Federal Rules of Civil Procedure. [Doc. 16-10 at 9]. The Plaintiff also

objects that the Defendant failed to comply with L.R. 7.1(b) by failing to make

a good faith attempt to resolve this dispute before filing this Motion. [Doc. 17

at 20]. Despite his objections, the Plaintiff disclosed that he discovered the

alleged infringement by conducting a “reverse Google Image search” after

realizing that other individuals and companies had copied the Work. [Doc.

16-9 at 8].

The Plaintiff’s objections regarding the duplicative and cumulative

nature of the requests are without merit. The Plaintiff does not explain how

the requests are cumulative or duplicative, and the Court cannot identify

other requests that seek information about the Plaintiff’s discovery of the

alleged infringement or any other place where the Plaintiff provided the

Defendant with that information.

The Plaintiff also is simply incorrect to claim that the Defendant’s

requests seek information that is already provided in the Complaint. The

relevant allegations in the Complaint state that “[f]ewer than three years

before this filing, Oppenheimer discovered the infringement of his protected

image on Defendant[‘s] website . . . .” [Doc. 1 at ¶ 9]. That allegation

provides no information, however, about how the Plaintiff discovered the

alleged infringement. That allegation also provides no information about why

the Plaintiff was searching for infringement on his copyrights. As such, the

Defendant’s requests seek much more than just what is alleged in the

Complaint.

Further, the Plaintiff’s objections regarding the need to “marshal all his

evidence” are without merit. The Plaintiff cites no authority to support that

objection and other courts have found that “it is not a cognizable objection to

a discovery request to allege that the request requires the responding party

to ‘marshal the evidence.’” Heuskin v. D&E Transp., LLC, No. CV 19-957

MV/GBW, 2020 WL 1450575, at *3 (D.N.M. Mar. 25, 2020).

Finally, the Defendant complied with L.R. 7.1 by raising this discovery

dispute with the Plaintiff, holding a meet and confer to resolve the issue, and

giving the Plaintiff time to supplement his responses. The Local Rules do

not give the Plaintiff endless opportunities to supplement his deficient

responses to respond to issues raised by the Defendant.

For all these reasons, the Plaintiff’s objections to the Defendant’s

second group of requests are without merit.

C. Evidence of Actual Damages

The Defendant’s third group of discovery requests seek information

and documents regarding the Plaintiff’s alleged actual damages. The

Plaintiff objects to those requests, claiming that they are unreasonably

cumulative and duplicative and seek information that is already provided in

his disclosures. [Doc. 16-9 at 9]. The Plaintiff also objects that the

Defendant’s requests call for him to marshal all his evidence in violation of

the Federal Rules of Civil Procedure. [Doc. 16-10 at 12]. Nevertheless, the

Plaintiff provided a quote stating that he would have charged the Defendant

$4,594 for using the Work. [Doc. 16-10 at 13-14].

The Plaintiff again does not provide any basis for claiming that these

requests are unreasonably cumulative or duplicative. While some of the

Defendant’s other requests may encompass evidence that weighs on the

Plaintiff’s actual damages, those requests are not duplicative or cumulative

of this one, which specifically seeks “any and all actual damages” suffered

by the Plaintiff. [Doc. 16-9 at 9 (emphasis added)].

Further, contrary to the Plaintiff’s claims, the price quote in the

Plaintiff’s disclosures is insufficient to respond to the Defendant’s requests.

The quote does not provide the only measure of the Plaintiff’s actual

damages. Moreover, during the meet and confer, the Defendant asked the

Plaintiff to provide additional information regarding the formation of that price

quote, not just the price quote itself. As such, the Defendant’s requests seek

information beyond the lone price quote that the Plaintiff has provided in its

disclosures.

Finally, as discussed above, the Plaintiff’s objections regarding the

need to “marshal all his evidence” are without merit. Heuskin, 2020 WL

1450575, at *3.

For all these reasons, the Plaintiff’s objections to the Defendant’s third

group of requests are without merit.

D. Other Publications of the Work

The Defendant’s fourth category of discovery requests seeks

representative samples of all publications of the Work and any licenses,

transfers, or assignments for publications of the Work by other persons.

[Doc. 16-10 at 5]. The Plaintiff objects to the Defendant’s request as

overbroad, unduly burdensome, vague, and ambiguous. [Id.].5

Nevertheless, the Plaintiff disclosed that the Work is published on a website

that he maintains and provided a few places where he had published the

Work. [Doc. 16-10 at 15-17].

As discussed above, the Plaintiff’s assertion of boilerplate objections

constitutes grounds for overruling all of his objections. Kinetic Concepts, Inc.

v. ConvaTec Inc., 268 F.R.D. 226, 247 (M.D.N.C. 2010). Moreover, the

Plaintiff’s ambiguousness and vagueness objections are improper here. The

Plaintiff does not describe how it is ambiguous or vague to request any

licenses, transfers, or assignments associated with publications of the Work.

Moreover, during the meet and confer, the Defendant explained that it sought

all publications of the Work to ensure that it did not obtain the Work from a

source that had already removed the Plaintiff’s copyright management

information. [Doc. 16 at 23]. Such evidence is relevant to the Plaintiff’s

DMCA claim, which imposes liability only if the Defendant removed the

Plaintiff’s copyright management information or distributed the Work knowing

5 The Plaintiff also claims that the Defendant’s request for the images published by the

defendant in Oppenheimer v. Kenney, 1:18-cv-000252 (W.D.N.C. 2018) and by Alliance

of Devine Love, Inc. do not fall within the Defendant’s request because they were

“infringing uses, not publications authorized by [the Plaintiff].” [Doc. 17 at 22]. The

Defendant’s request solicits “all publications” of the Work, not just publications that were

authorized by the Plaintiff. [Doc. 16-9 at 4]. The Plaintiff’s “hair splitting distinctions” are

an improper basis for opposing the Defendant’s requests. Poole v. Textron, Inc., 192

F.R.D. 494, 499 (D. Md. 2000).

that the Plaintiff’s copyright management information had been removed. 17

U.S.C. § 1202(b)(1)-(3). As such, the Plaintiff’s vagueness and

ambiguousness objections are without merit.

The Plaintiff’s overbreadth and burden objections are also

inappropriate here. While the Plaintiff may have to spend some time and

effort to locate other publications of the Work, he has undertaken such

searches in the past for his own purposes. [Doc. 16-9 at 7-8]. Having done

so, he cannot now claim that conducting a similar search would be overly

burdensome here. Moreover, the Plaintiff admits in his response to

Interrogatory 5 that he was unable to find any licenses, assignments,

transfers, settlements, or other permissions that granted another party

permission to use the Work. [Doc. 16-9 at 5]. As such, he already has

undertaken the burden of searching for any documents that are responsive

to the latter half of the Defendant’s request.

For these reasons, the Plaintiff’s objections to the Defendant’s fourth

category of requests are without merit. Because the Plaintiff’s other

objections are also without merit, and the Defendant seeks discovery that is

relevant to the claims and defenses in this matter, proportional to the needs

of the case, and not privileged, the Defendant’s Motion to Compel [Doc. 15]

will be granted. Fed. R. Civ. P. 26(b)(1).

E. Attorney’s Fees

When a motion to compel is granted, the Court “must, after giving an

opportunity to be heard, require the party . . . whose conduct necessitated

the motion . . . or attorney advising that conduct, or both to pay the movant's

reasonable expenses incurred in making the motion, including attorney's

fees.” Fed. R. Civ. P. 37(a)(5)(A). The Court must not order payment,

however, if: “(i) the movant filed the motion before attempting in good faith to

obtain the disclosure or discovery without court action; (ii) the opposing

party's nondisclosure, response, or objection was substantially justified; or

(iii) other circumstances make an award of expenses unjust.” Id.

The Defendant has not yet submitted any information regarding the

costs and fees that it incurred in bringing its Motion to Compel. The Court

will direct the Defendant to file, within seven (7) days from the entry of this

Order, the number of hours reasonably expended filing the Motion to

Compel, the hourly rate charged, and the prevailing market rate in the

relevant community. See Robinson v. Equifax Information Servs., LLC, 560

F.3d 235, 243–244 (4th Cir. 2009). To provide the opportunity for hearing

required by Rule 37(a), the Court will direct the Plaintiff to show cause in

writing, within fourteen (14) days of the Defendant’s filing, why the Court

should not award the Defendant its costs and fees. The Plaintiff's filing shall

be no greater than ten (10) pages.

ORDER

IT IS, THEREFORE, ORDERED that the Defendant's Motion to

Compel [Doc. 15] is GRANTED. The Plaintiff shall serve the responses so

compelled within ten (10) days of the entry of this order.

IT IS FURTHER ORDERED that the Defendant shall file, within seven

(7) days from the entry of this Order, the number of hours reasonably

expended filing the Motion to Compel, the hourly rate charged, and the

prevailing market rate in the relevant community. The Plaintiff is ordered to

show cause, within fourteen (14) days of the Defendant's filing, why the Court

should not award the Defendant its costs and fees incurred in bringing the

Motion.

IT IS SO ORDERED.

Signed: August 14, 2020

Martifi Reidinger ee

Chief United States District Judge AS

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