SM Kids, LLC v. Google LLC

Ian Shapiro USDC SDNY Via CM/ECF

+] 212 479 6441 DOCUMENT

ishapiro@cooley.com ELECTRONICALLY FILED

DOCH

DATE FILED: 10/24/2020

October 23, 2020

The Hon. Stewart D. Aaron

Daniel Patrick Moynihan United States Courthouse

500 Pearl Street

New York, NY 10007

Re: SM Kids, LLC v. Google LLC, et al. (18-cv-2637)

Dear Judge Aaron:

Counsel for Plaintiff SM Kids, LLC (“SM Kids”) and Defendants Google LLC, Alphabet

Inc., and XXVI Holdings Inc. (“Google”) write jointly pursuant to the Court’s Orders (ECF No.

118, 44 and ECF No. 126), directing the Parties to file a Joint Letter setting forth each side’s

position on disputes concerning custodians, search terms, date ranges, and any other disputes.

I. DATE RANGES

A. Date Ranges Applicable to the Collection of Documents in Google’s Possession,

Custody, or Control

1. SM Kids’ Position

The parties dispute the date range that should be searched. SM Kids has requested

Google to apply a range of January 1, 2008, to February 26, 2018, except for SM Kids’ Requests

for Production of Documents (individually, an “RFP”) 15 and 16, to which SM Kids has

requested Google to apply a date range of January 1, 2005, to February 26, 2018. These RFP’s

request the following documents:

15. All Documents concerning the lawsuit Steven Silvers filed against Google in the

United States District Court for the Southern District of Florida (Civil Action No. 05-

80387).

16. —_ All deposition transcripts from the lawsuit Steven Silvers filed against Google in

the United States District Court for the Southern District of Florida (Civil Action No. 05-

80387), including but not limited to the deposition transcript of Sergey Brin.

Cooley

The Hon. Stewart D. Aaron

October 23, 2020

Page 2

In that case (the “Silvers Litigation”), SM Kids’ predecessor, the senior user of the

“GOOGLES” mark, sued Google for trademark infringement. The Silvers Litigation resolved

when the parties entered to the 2008 Settlement Agreement that is the subject of this action.

Nevertheless, Google has asserted that nothing related to the Silvers Litigation is relevant

to the meaning of the Settlement Agreement except for the drafts of the Settlkement Agreement

itself. Google also refused to verify whether any such relevant documents even exist unless SM

Kids - which (unlike Google) was not party to and has no access to the documents filed under

seal in the Silvers Litigation - can prove otherwise.

The parties’ understanding of the meaning of the Settlement Agreement at the time it was

executed is a central issue in this action. SM Kids contends that documents relevant to the

Silvers Litigation are necessarily instructive as to the meaning of the very document that

resolved that matter. Most filings on the public docket of the Silvers Litigation were filed under

seal and are thus unavailable to SM Kids (though are available to Google and presumably in their

possession already). However, it is evident from what information is available publicly that the

parties to the Silvers Litigation conducted a mediation on September 6, 2006. See Report of

Mediation Conference, Si/vers v. Google, Inc., No. 9:05-cv-80387-KLR, ECF No. 122 (S.D. Fla.

Sept. 13, 2006). It is highly likely that the 2006 mediation played a part in shaping the Settlement

Agreement ultimately executed and documents and/or communications were created in

connection with the 2006 mediation that would reflect the parties’ understanding of the meaning

of the terms ultimately documented in the Settlement Agreement. It is also highly likely that

documents and deposition testimony will shed light on key terms included in the Settlement

Agreement, if and to the extent those terms are ambiguous or, as is permitted under New York

law, to supplement terms in the agreement but not to contradict them — including what Stelor’s

business was in 2008, what “develop,” publish” and “create” meant in the context of the

agreement, and what third party content Google was permitted to employ.

Google’s position is based on its unproven assertion that the concepts and compromises

contained in the Settlement Agreement first appeared with the creation of the initial draft of that

document and not as a result of prior background discussions. On the contrary, resolving the

Silvers Litigation took over two years from the time of the initial effort until it was finally

settled. The mediation indicates that there are likely relevant documents prior to 2008. If Google

wishes to represent that none exists, it should at minimum conduct a search to verify this.

2. Google’s Position

Google intends to collect and review responsive documents from two different date ranges.

First, subject to Google’s responses and objections to Plaintiff's Requests for Production

Nos. 23, 24, and 29, Google will produce responsive documents in the following date range:

February 23, 2013 - Present. In response to these requests, Google agreed to produce documents

The Hon. Stewart D. Aaron

October 23, 2020

Page 3

sufficient to identify content: (1) created, designed, or published by Google that has a title of

GOOGLE or a GOOGLE-formative title or mark, and (11) which content was not or will not be

sold, published, or distributed by third parties. Judge Schofield’s Individual Rules do not require

a party to search documents created more than five years before the filing of the lawsuit, absent

agreement or good cause. Judge Schofield’s Individual Rule I.A(b). Plaintiff filed this lawsuit

on February 23, 2018, thus Google is not obligated to collect documents prior to February 23,

2013. Google does not agree to do so; nor has SM Kids identified good cause to do so.

Second, subject to Google’s responses and objections to Plaintiff's remaining Requests for

Production, Google will search for and collect documents in the following date range: January 1,

2008 through February 23, 2018. The parties to the Settlement Agreement at issue signed it on

December 15 and 16, 2008. Though there were efforts to settle the dispute earlier than 2008, the

documents reviewed thus far reflect that the parties only began negotiating the document that

became the Settlement Agreement in the fall of 2008. For these reasons, Google agrees to search

for documents as far back as January 1, 2008, but does not agree there is good cause to search for

documents prior to this date.

II. CUSTODIANS

A. SM Kids’ Custodians

1. SM Kid’s Position

SM Kids has identified Stephen Garchik and Tammy DePaolis as the custodians having

documents responsive to Defendant’s requests.

1. Google’s Position

Google requests that SM Kids disclose the third-party custodians from whom it intends to

collect documents.

B. Google’s Custodians

1. SM Kid’s Position

During the parties’ meet and confer sessions, SM Kids inquired whether Google intends

to search the records of Tim Alger, Pavni Diwanyji, Shimrit Ben-Yair, and Malik Ducard as

custodians. Google responded that it is investigating whether these individuals possess relevant

documents, but have not yet stated definitively whether these individuals will be treated as

custodians.

The Hon. Stewart D. Aaron

October 23, 2020

Page 4

All of these individuals are highly likely to have documents relevant to this dispute and

have either been noticed or subpoenaed for depositions by SM Kids. Notably, Tim Alger signed

the Settlement Agreement at the heart of this case. The remaining individuals are or were

prominently and intimately involved with Google’s children’s entertainment offerings. Given

that SM Kids has not moved to compel production of all of the various requests for production it

made respecting Google’s children’s product offerings, to the limited extent that these custodians

would have documents responsive to the remaining requests to which Google did not object and

has agreed to produce documents, these custodians’ record should be searched.

1. Google’s Position

Google has identified six custodians as potentially having documents responsive to

Plaintiff's requests. These individuals include: Adam Barea, Ruchi Bezoles, Andrew Abrams,

Rose Hagan, Terri Chen, and Gina Paik. Google will continue to supplement this list if it identifies

additional custodians.

I. SEARCH TERMS

A. SM Kids’ Documents

1. SM Kids’ Position

(i) SM Kids Has Resolved Discovery Questions

Google attempts to manufacture several “inconsistencies,” discussed below. In actuality,

counsel for SM Kids has conducted further due diligence into the questions raised in the October

14, 2020 conference and has clarified its position based on new information. First, counsel for SM

Kids has confirmed that all the materials in the boxes containing Stelor documents — namely,

Googles from Goo character bibles and scripts — were already collected and produced by SM Kids

in 2018. There are no other documents in the boxes that have been withheld. The matter of the

Stelor boxes was not raised in advance of the October 14, 2020 hearing; the fact that counsel did

admitted to not having an answer at that time, on the record, is not probative of the actual answer,

which we have now provided, about the Stelor boxes. Moreover, Google has noticed the

deposition of Tammy DePaolis, who was the custodian of those records, and will be able to ask

her any questions about the collection of documents from the boxes.

Cooley

The Hon. Stewart D. Aaron

October 23, 2020

Page 5

Second, while SM Kids’ files do contain documents relating to Stelor and those documents

have already been collected, counsel for SM Kids has confirmed that it does not possess a separate

email or file server for Stelor. It frankly could not be more clear and less suspicious that Mr.

Garchik and Ms. DePaolis, his long time administrative assistant, have used the same email domain

for many years. Therefore, by searching their emails, ESI from the Stelor, SJM Partners, and SM

Kids eras will be produced.

(ii) SM Kids’ Technical Limitation to Non-Boolean Searches

Google has proposed numerous search terms that utilize search operators that isolate

documents that contain certain words within a certain proximity of each other (e.g. “Steven /2

Silvers”) (a “Proximity Operator”). SM Kids is unable to use such Proximity Operators in its first

stage of document collection, and, therefore, has proposed alternative searches to accomplish the

same results (e.g.,” Steven Silvers,” “Silvers, Steven,” “Steve Silvers,” “Silvers, Steve”).

There is no requirement that searches be conducted using Proximity Operators. SM Kids

employs a document management system that allow searches without Proximity Operators, but

its searches fulfill all of the requirements of Fed. R. Civ. P. 26 and the ESI Protocol entered into

between the parties. To export the data from SM Kids’ system to a different system would

involve an expense of over $10,000 with no demonstrable incremental gain in identifying the

universe of documents to be reviewed. In an abject attempt to exploit the chasm of recourses

available to Google and SM Kids, Google has unjustifiably failed and refused to agree to provide

search terms that would satisfy the same purposes as its proposed Boolean searches. For

instance, instead of employing a Boolean search for the names of certain individuals using the

convention (“first name” /2 “last name”) as Google insists, SM Kids is willing to search: (1) “last

name, first name”; (11) “first name, last name”; (111) “first name, middle initial (to the extent

known or discoverable), last name”; (iv) any nickname (to the extent known or discoverable);

and (v) any email address (to the extent known or discoverable). SM Kids believes these

alternatives would capture the same responsive documents as the (“first name /2 last name”)

search method while also respecting the technical limitations of SM Kids’ search capabilities.

Google nevertheless continues to object to these alternatives to the search terms proposed by

Google that utilize Proximity Operators, insisting that these searches be conducted in the way it

dictates. The Court should not endorse Google’s insistence on a search that is extremely

burdensome and needlessly expensive to SM Kids.

SM Kids further notes that in addition to running search terms across millions of emails,

many of which do not concern this action, SM Kids is manually reviewing every document and

file organized by the custodians as relating to Googles without regard to search terms. Given SM

Kids extensive efforts, Google’s purported fear that it will be deprived of relevant documents is

unfounded.

Cooley

The Hon. Stewart D. Aaron

October 23, 2020

Page 6

(iii) Non-Party Custodians Should Not Be Obligated to Run the Same Searches as the Party

Custodians

SM Kids rejects Google’s assertion that the non-party custodians identified by SM Kids

are obligated to run all (or substantially all) of search terms SM Kids has agreed to for its document

collection and review. These third parties not agreed to the ESI protocol governing the parties’

discovery and are not subject to the Court’s Order, entered October 14, 2020, directing the parties

to agree on search terms. Even though some of these non-parties are represented by the same

counsel as SM Kids, the burden and proportionality analysis does not militate toward identical

treatment. The non-party custodians identified by SM Kids, which includes of five individuals

and a number of small companies, plainly do not have the resources available to Google LLC or

even SM Kids. While we are in the process of consulting with the third parties on this issue and

will advise Google of the search terms appropriate for their document collection efforts by

November 2, 2020, in brief, we intend to run search terms nearly as broad (with certain disclosed

and agreed upon exceptions) on the corporate non-parties. Individuals with no interest in this

lawsuit, whose involvement was brief and ended years ago, ought not to be put through same

rigors.

(iv) Search for “Ganz” Is Not Likely To Yield Relevant Materials

Google requests that SM Kids search for “Ganz” because it supposedly seeks documents

related to the scope of SM Kids’ rights in the GOOGLES trademark relative to Ganz. But as

Google acknowledges, the court in the Ganz litigation granted summary judgment in favor of Ganz

and entered an injunction to this effect. All the information that Google seeks related to the scope

of SM Kids’ rights is in that injunction, which is publicly available on the Ganz docket. Any

additional collection and review of Ganz documents is unduly burdensome of the SM Kids’

resources and vastly disproportionate to the needs of thiscase

Contrariwise, while SM Kids may have proposed “Ganz” as a search term for Google,

Google also objected to the term as “overly broad” and has refused to use it. By Google’s logic, if

SM Kids’ request to use Ganz as a search term establishes that the search term is presumptively

relevant, then Google’s objection to the search term must also establish that it is presumptively not

narrowly tailored to the needs of the case

2. Google’s Position

Google has significant concerns about SM Kids’ approach to searching for documents

responsive to Google’s Requests for Production.

Cooley

The Hon. Stewart D. Aaron

October 23, 2020

Page 7

(i) SM Kids Has Made Inconsistent Representations about the Boxes of Paper Documents

It Inherited from Stelor.

At the October 14, 2020 hearing, the Parties discussed an undefined number of boxes

containing documents related to Stelor’s business. SM Kids invoked these boxes to argue that

producing all documents and communications relating to Stelor would be burdensome. ECF No.

123 at 11. SM Kids represented that the boxes contained Stelor’s website’s “content bible,” as

well as “videos and computer code and books and music and storylines,” and “business documents

... agreements ... financials of the company, etc.” Jd. at 16. Counsel for SM Kids further

represented “I haven’t personally been through every document, nor have we, in fact, been through

every document as a team yet.” /d. The Court commented that SM Kids might be “trying to

protect” these documents because either it was “aware of some highly damaging document” or it

was “looking for boogeymen that don’t exist.” Jd. at 14. The Court subsequently ordered SM

Kids to produce the boxes, and to not withhold anything other than privileged materials. /d. at 17;

ECF No. 118, § 1.

SM Kids now claims it already produced the entire contents of the boxes in 2018, and does

not intend to produce the boxes. This new representation is confounding and concerning. Why

did SM Kids invoke these boxes in support of the burden of producing documents relating to Stelor

at the last conference if it had already produced all of the documents that the boxes contained?

Why did SM Kids deliberately avoid acknowledging that the documents in those boxes had already

been produced? How did SM Kids not know how many boxes there are if it had collected them in

2018?

Based on this record, Google requests that the Court direct SM Kids to explain how many

boxes Steven Garchik inherited from Stelor when he allegedly succeeded to Stelor’s rights in the

Googles business, where the boxes have been stored since then, whether any of the boxes have

been discarded during that period, by whom and when, whether all of their contents have been

produced, the Bates-range for those contents, and whether there are any further contents of those

boxes to produce.

(ii) SM Kids Has Made Inconsistent Representations about Stelor’s Email Server.

In the October 14, 2020 hearing, in the context of discussing the burden to SM Kids of

producing emails relating to Stelor, SM Kids said that Stelor had an email server. ECF No. 123 at

14-15. Based on that representation, the Court directed Google to use search terms to search the

email server for documents relating to Stelor. /d. at 16. SM Kids agreed to use search terms to

search the email server for documents relating to Stelor. /d. at 42-43. The Court even offered SM

Kids the opportunity to negotiate for limits on the number of custodians to be searched and SM

Kids represented that it would apply the search terms to all custodians. /d. SM Kids now

represents that Stelor does not have an email server (or a file server).

Cooley

The Hon. Stewart D. Aaron

October 23, 2020

Page 8

Based on this record, Google requests that the Court direct SM Kids to explain this

troubling inconsistency, including whether Stelor ever had an email or file server or other forms

of ESI, whether those servers or ESI were inherited by Garchik (or some other individual or entity),

whether any of those sources of ESI might still exist, and, if not, when it was discarded, and by

whom, and finally why counsel for SM Kids represented to Google and the Court that it would

search Stelor’s email server if it in fact did not exist.

(iii) SM Kids Refuses to Conduct a Reasonable Search of SJM Partners’ ESI.

Based on SM Kids’ now modified representations, Google understands that SM Kids’ only

source of ESI is the SJM Partners’ email server (and possibly file server). SM Kids has only

identified two potential custodians for that ESI: Steven Garchick and Tamara DePaolis, the latter

of whom ts described on SJM Partners’ website as the company’s development director. Yet, SM

Kids is unwilling to conduct a reasonable search on these custodians’ emails by extracting their

email data for the relevant date range and applying Boolean-style search terms which is a standard

and reasonable discovery practice in litigation.

Instead, SM Kids 1s only willing to search for emails in the way that you might search for

the last email from a friend in your inbox, by using the email application’s search function. This

form of searching email data is unacceptable because it does not support Boolean searches, or the

use of wildcard characters.

SM Kids claims 25 million dollars in damages in this case, and seeks to enjoin Google

from using its house mark, GOOGLE. ECF No. 1. Google is entitled to the relevant discovery to

defend itself in this action. SM Kids has not established that the burden of extracting custodian

email data and conducting standard Boolean searches would be disproportionate to the needs of

the case. Fed. R. Civ. Pro. 26(b)(2)(B) (“[T]he party from whom discovery is sought must show

that the information is not reasonably accessible because of undue burden or cost.”). Nor should

it be, as that is the method of searching ESI used in nearly every case.

At present, Google is working with SM Kids to find solutions so that Google is not deprived

of relevant documents that would have been identified by Google’s Boolean search terms. Google

reserves its right to object to SM Kids’ refusal to run Boolean search terms if the Parties are not

able to reach resolution on this issue.

(iv) SM Kids Will Not Agree to Search Terms for Third Parties It Represents.

SM Kids has not yet agreed to run any search terms Google proposed across the third

parties it represents, including: Taral Productions, Peace Love Solve, Bungalow Media &

Entertainment, Tamara DePaolis, Allan Cohen, David Evans, Robert Friedman, and Matthew

Mazer. The Parties are still meeting and conferring on this issue, and will update the Court if there

is a dispute.

Cooley

The Hon. Stewart D. Aaron

October 23, 2020

Page 9

(v) SM Kids Is Unwilling to Use “Ganz” as a Search Term.

Ganz is a Canadian toy company that sued SM Kids for infringing its trademark

GOOGLES and breaching a trademark coexistence agreement related to the same mark. Ganz v.

SM Kids, LLC, 2019 WL 4013970, at *1 (D. Del. 2019). The court in that case granted summary

judgment in favor of Ganz, and entered an injunction delineating SM Kids’ narrow rights in the

GOOGLES trademark. Both Parties in this case proposed “Ganz” as a search term. Despite

proposing it as a search term itself, SM Kids objected to applying this term to its documents based

on relevance. SM Kids’ objection should be overruled. SM Kids’ request to use Ganz as a search

term establishes that the search term is presumptively relevant. Moreover, even if SM Kids had

not chosen Ganz as a search term, the Court should conclude that it is relevant because documents

referring to Ganz are likely to be related to the scope of SM Kids’ rights in the GOOGLES

trademark relative to Ganz; and the scope of SM Kids’ alleged rights in the mark is relevant to

whether Google’s conduct is likely to create confusion.

B. Google’s Documents

1. SM Kids’ Position

SM Kids proposed the following search terms, to which Google objected, to target

documents that will: (1) reflect Google’s understanding of the phrase “create, develop and

publish” children’s entertainment content from Section 7 of the Settlement Agreement; and (ii)

reflect the processes used by Google to curate the third-party children’s entertainment content

published and distributed through Google Play and YouTube Kids. These search terms were

proposed in connection with Google’s responses to SM Kids’ RFPs 18 and 21, in which Google

agreed to produce document sufficient to describe the “purpose, functionality, or features” of

Google Play and to describe the service provided by YouTube Kids, respectively.

SM Kids has proposed the following search terms to which Google has objected:

e “Google w/20 (“curat!” “publish!” “distribut!” “creat!’’)

e Sell! /s third /2 party

e Publish! /s third /2 party

e Distribut! /s third /2 party

Google has objected to these search terms on the grounds that it has not agreed to produce

documents concerning the methods and processes Google uses to curate the children’s

entertainment content offered through Google Play and YouTube Kids, and that it agreed only to

produce documents sufficient to identify the children’s content it offers in connection with

Google Play and YouTube Kids in responses to SM Kids’ RFPs 17-24.

Plaintiff has heeded the Courts’ position that it should not seek voluminous amounts of

documents with respect to Google’s offerings in the children’s entertainment space and,

Cooley

The Hon. Stewart D. Aaron

October 23, 2020

Page 10

accordingly did not move this Court with respect to Google’s assertion that it would only

produce documents sufficient to identify the children’s entertainment products offered by Google

in response to SM Kids’ RFP 24. Similarly, SM Kids is not objecting to Google’s objections on

certain other search terms that it argues are unnecessary in light of Google’s objection and

response to RFP 24.

However, SM Kids’ theory of the case is that Google has violated the Settlement Agreement

by, among other things, publishing, distributing, and creating children’s entertainment content

available through Google Play and YouTube Kids as well as by curating third-party children’s

entertainment content published and distributed through those platforms. SM Kids must be able

to seek discovery on Google’s understanding of the meaning of the settlement and on Google’s

actions that SM Kids alleges breach the Settlement Agreement. Moreover, Google has agreed to

produce documents concerning the “purpose, functionality, or features” of Google Play and the

service provided by YouTube Kids, both of which undoubtedly include Google’s methods and

processes to curate, publish, or distribute content on those platforms. These documents are

critical to exhibit what Google, as demonstrated through its actions, understands the words

“create, develop and publish” mean. Google cannot now rewrite its responses to SM Kids’

discovery requests through search term negotiations.

2. Google’s Position

SM Kids requests that Google apply dozens of search terms that are intended to cull

documents relating to children’s content, YouTube Kids, and Google Play, irrespective of whether

those documents would have any relationship to the Settlement Agreement. For example, SM

Kids has requested the following search terms: “‘animat! /s content!” or “cartoon!” or “video! w/

10 child” or “program! w/ 10 family.” In response to SM Kids’ requests for all documents related

to children’s offerings, Google objected and agreed to provide documents sufficient to show

content (1) created, designed or published by Google after 2013 that has a title of GOOGLE or a

GOOGLE-formative title or mark, and (11) which content was not sold, published or distributed by

third parties. Google also agreed to provide documents sufficient to describe the “purpose,

functionality, or features” of Google Play, and documents sufficient to describe the service

provided by YouTube Kids. Google served these objections on August 14 and September 4, 2020,

and SM Kids decided to forgo the opportunity that the Court offered it at the last conference to

move to compel a broader production for documents relating to Google’s children’s content.

Google has already begun collecting and producing the documents responsive to these requests.

Therefore, applying broad search terms is unnecessary and not remotely proportionate to the needs

of the case. To the extent Google has any emails that relate to both children’s content and the

Settlement Agreement or SM Kids, such documents will be culled by the existing agreed-upon

search terms that were intended by both parties to identify documents relating to those topics (e.g.,

the Settlement Agreement, the GOOGLES mark, or the Googles business).

Cooley

The Hon. Stewart D. Aaron

October 23, 2020

Page 11

Sincerely,

Cooley LLP Davis Wright Tremaine LLP

By: _/s/ Jan Shapiro By: s/ John M. Magliery

Tan Shapiro John M. Magliery

Attorneys for Defendants Attorneys for Plaintiff SM Kids, LLC

236528327

In its discretion, the Court hereby resolves the parties’ discovery disputes, as follows:

1) Pursuant to Judge Schofield's Individual Rule II(A)(1)(b), except as otherwise stipulated by the parties, the

date range to be searched shall commence no earlier than February 23, 2013. The Court does not find that

good cause exists to justify a date range for RFP 15 and 16 starting on January 1, 2005. Rather,

Defendants’ agreed-upon start date for RFP 15 and 16 of January 1, 2008 is reasonable.

2) No later than October 30, 2020, Plaintiff shall disclose to Defendants the third-party custodians from

whom it intends to collect documents.

3) No later than October 30, 2020, Defendants shall advise Plaintiff whether they agree to search the records

of Tim Alger, Pavni Diwanyi, Shimrit Ben-Yair and Malik Ducard as custodians.

4) Based upon the representations made in this letter by Plaintiff's counsel, the Court shall enter no orders at

this time regarding the subject boxes, email server or file server; Defendants may inquire at depositions

about them.

5) The parties shall continue to meet and confer regarding Plaintiff's use of Boolean search terms, as well as

the search terms to be used by third-party custodians, and seek Court intervention, as needed.

6) With respect to the search term "Ganz," either both parties shall use it as a search term, or neither shall do

so. If it is agreed that both parties will use that search term, and an excessive number of hits results from

use of that term, the parties shall meet and confer to seek to minimize any undue burden.

7) On proportionality grounds, the Court does not compel Defendants to use the four sets of search terms to

which Defendants object.

SO ORDERED.

Dated: 10/24/2020 is J hun