GREGORY G. HOLLOWS, Magistrate Judge.
Both private parties are involved in assisting California residents to register vehicles and other sundry tasks required by the California Department of Motor Vehicles (DMV), but in different ways. Defendant, counter-claimant,
The removed complaint alleges a relatively straight forward failure to pay money, breach of contract action with related alternative remedy counts. That is:
Cartagz alleges in its counter-claim that it supplied an interactive advertisement/form to Online Guru for its advertisements with which members of the public could ultimately accept the registration services of Cartagz. The counter-claim further alleges that Online Guru took an interactive advertisement created by Cartagz, and later utilized it as a means by which a Cartgaz competitor (CA Reg) could acquire the business with which it (Cartagz) would otherwise have procured through its advertisement form. Cartagz concludes that the use of the form by Online Guru for Cartagz competitors infringed its advertisements/forms copyright protections. The date given in the counter-claim for the first violation of Cartagz copyright rights occurred on September 30, 2015.
Specifically, the counter-claim alleges:
It should also be noted at this time, that since 2014, there has been an underlying hostility between Cartagz and CA Reg. Cartagz believed that that the CA Reg founder (Gregory Sanders—a former principal with Cartagz) misappropriated trade secrets and other Cartagz property for use in engaging in competition with Cartagz. This hostility erupted into a lawsuit, 2:15-cv-01918 MCE GGH, which was settled before the undersigned in 2016. In very general terms, Cartagz, once an industry leader in private registration assistance, fell upon hard times when Gregory Sanders left Cartagz and founded CA Reg and other related companies/websites which then greatly surpassed Cartagz in business. Cartagz believed that this success had been accomplished through the commission of business torts by Sanders and his companies/websites. Ostensibly, neither Sanders nor CA Reg is sued in the counter-claim because of the settlement provisions.
Cartagz is moving to compel production of documents by Online Guru. The parties have dutifully reproduced the request for production discovery at issue, and dutifully set forth (and repeated and repeated . . .) legal arguments, which stretch to 117 pages. To make sense of this morass, the undersigned has divided the discovery requests into five areas:
However, before delving into the disputed requests, the undersigned finds several overarching problems with many of these discovery requests:
For each of these requests, Online Guru makes its "vague and ambiguous," "beyond the scope of discovery," "confidential information," "no time restriction, and "unduly burdensome," and "equally available" objections, or variations thereon. It then states for Request 3: "Without waiving these objections, Plaintiff will agree to produce the Cartagz advertisments.
The undersigned understands the "WEBSITE" to be the dmv.org website from the Joint Statement. Having agreed to produce the Cartagz advertisements without limitation, Online Guru will be ordered to do so. The "without waiver" objections are meaningless. This concession removes any issue as to Request 3.
Nonetheless, Request 1 goes further to demand "all advertisements" which would seem to make requests 2 and 3 superfluous. This request, dating back to the dawn of the "WEBSITE," does not relate to the specific allegations of the counter-claim which precisely identify the date of infringement as "on or about September 30, 2015." The fair implication of the allegation is that Online Guru advertisements from whatever company or website prior to that time were not infringing. Nor does an "all advertisements," no matter what company is involved, make any sense. In one breath Cartagz claims: "In its request, Cartagz seeks information regarding the entities and individuals involved in Online guru's disabling of Cartagz advertisements and their replacement by Greg Sanders' infringing advertisements." Joint Statement at 5. It then appears to implicitly and inconsistently argue that any advertisement, from whatever time or from whomever made is fair game.
The undersigned has reviewed the plethora of affirmative defenses — some might say "boilerplate"— set forth in the Answer to the Counter-claim. There is no defense which would directly repudiate the date given for the infringement—September 30, 2015. However, the defenses of estoppel, waiver, consent and the like might factually implicate an earlier time, i.e., Online Guru was running infringing ads prior to the given date of infringement, but Cartagz did not care, and this indifference forms the basis of the pled defenses. The defenses may also implicate companies'/websites' advertisements other than those associated with Gregory Sanders. The moral to the story of affirmative defenses is—be careful what you plead in the way of defenses, you just might have to produce discovery on them.
Therefore, one must tie discovery to Fed. R. Civ. P 26 (b)(1)— that in order to be relevant, a request must relate to a "claim" or "defense," and giving an "on or about" reasonable time frame, as well as recognizing that the defenses may implicate a time prior, and not including Request 3 which has already been decided, Online Guru must produce all advertisements on the dmv.org website dating from September 30, 2012 to the present from any company or website.
This does not end the dispute. Cartagz argues that the advertisements per se are insufficient; rather all electronic information associated with the advertisements, e.g., metadata, presumably source code, and other electronic information need to be produced as well. The problem with this is that the requests specifically ask for, and only ask for, "advertisements" on the "WEBSITE" as these are the documents exposed to the public which would be infringing, if there is infringement. The request does not ask for the underlying electronic documentation, written drafts, old pictures, sticky notes, or anything else. Nor has the undersigned been directed to a definition in the non-filed Request for Production which would expand the plain meaning of "advertisements" to all documents associated with the "advertisement,", nor has a definition been given to the undersigned from the non-filed Request for Production requiring production in a certain, or any, electronic format. Thus, Online Guru's production of pdf copies of the advertisements themselves sufficiently respond to the requests and comply with the rules requirement that: "If a request does not specify a form for producing electronically stored information, a party must produce it in a form or forms in which it ordinarily maintained, or in a reasonably usable form or forms. F ed. R. Civ. P 34 (b)(2)(E)(ii). Copies of advertisements in pdf format are the alternative, reasonably usable form in the context of this case and the discovery requested.
Accordingly, Online Guru shall produce any companies' advertisements from September 30, 2012 as directed above, except for Cartagz advertisements which will be unlimited as to time.
Group 2 is the "correspondence" group of requests:
On the face of Requests 4, 5 and 6, one could legitimately wonder whether the instant lawsuit is an attempted resurrection of the settled lawsuit, but assuming it is not, the requests are fatally overbroad. The overbreadth does not result per se from an "all documents" request for "correspondence." Rather it results from the fact that these parameters are not tethered to the issues in the case, nor is there any stated time frame. "Correspondence" (includes letters, emails, memos or nearly any writing transmitted by one to another) as appears in the request could be linked to any issue or event including business transactions having nothing to do with Cartagz advertisement copyright infringement or transmission of Cartagz "confidential information" (undefined in the counter-claim), e.g., golf games, friendly banter, football tickets and the like. Many cases stand for the proposition that the discovery must expressly relate to the issues in the case in which it is propounded.
Nor does Cartagz' argument in the joint statement alleviate the problem. Rather, the much repeated statement that: "In its request, Cartagz seeks information regarding the entities and individuals involved in Online Guru's disabling of Cartagz's advertisements on its websites and their replacement by Greg Sanders' infringing advertisements," demonstrates that the above quoted requests do not contain this argumentative limitation at all.
Moreover, the requests obviously impinge upon the privacy interests of third parties. As briefed by Online Guru, a balancing of a third party's privacy, especial financial privacy, interests with the needs of the case must be employed.
Requests 15 and 16 more narrowly define the correspondence sought, but ultimately fall before overbreadth considerations as well. First, the parties fail to relate to the undersigned in a meaningful way who these listed people are and why they have any relevance to the issues in this case. And, once again, the "all correspondence regarding Cartagz" requesst is not in any way limited to the issues in the case.
Accordingly, the motion to compel production of these requests are denied.
Group 3 is described as "all documents" or "payment" documents associated with a third party individual (Gregory Sanders) and CA Reg, Continuum Data Products, EZTagz; DMV.com, and billing records of Cartagz, CA Reg. the precise requests are as follows:
Request for Production 10: ALL DOCUMENTS REGARDING payments from Gregory Sanders to ONLINE GURU.
Request 19 is germane to the non-payment claim brought by Online Guru in the initial complaint. "Without waiving objections," Online Guru acceded to the request. The documents responsive to this request shall be produced.
Request 20 is of problematic relevance. Perhaps the theory is that CA Reg was paying Online Guru "extra" for use of Cartagz advertisements, or for the Cartagz "confidential information" alleged to have been imparted, i.e., the billings were in excess of the "normal charge" Online Guru would charge for directing internet traffic to the CA Reg site. On the other hand, Cartagz might simply want to see if CA Reg received a better deal that Cartagz. However, if the sought information is subject to, initially at least, a protective order, the court will order its production from 2014 to the present time.
Requests 7, 8, 13, 14 are obviously overbroad for the reasons set forth in the previous discussion. The requests are constrained neither by subject matter nor by time period. They need not be the subject of response.
The remaining requests in this group, 9, 10, 11, and 12 are now reviewed, but first, the allegations of the counter-claim should be set forth again here. Cartagz' contract or AGREEMENT was breached by the alleged copyright infringements knowingly entered into by Online Guru, and by ceasing to run Cartagz ads; by making unauthorized copies and derivative advertisements based on Cartagz advertisements (again, copyright infringement); and: "using Cartagz's confidential information for purposes other than carrying out the [contractual] Agreement; namely, on information and belief, by sharing Cartagz's confidential information with Sanders and related parties [e.g., CA Reg]."
First, it is difficult to understand what is meant by Cartagz's "confidential information"— everything Cartagz imparted to Online Guru, something less than all information, or specifically unidentified information? The requests ask Online Guru (and the court) to guess at what Cartagz would deem confidential information. Moreover, by the very allegations, and only allegations about breach of contract, the improprieties could only be one-way, i.e., actions taken by Online Guru to impart confidential information to Sanders, or one of the other Sanders related listed entities. Thus, it makes no sense in the context of this case for Online Guru to be making payments to the persons or entities to whom it was imparting information; rather the recipients of such information would be paying Online Guru. In many respects, the proposed discovery requests are requests for production in search of a case theory. Requests 11 and 12 need not be the subject of response.
This leaves Requests 9 and 10—payments to Online Guru from either Sanders or CA Reg. Although there may be significant overlap between the billings documents permitted to be discovered and payment documents, the undersigned will permit discovery of payments on the same basis as billings, i.e., limited as to time and pursuant to a protective order.
The one request at issue here, No. 17, requests production of ALL DOCUMENTS REGARDING ownership of ONLINE GURU from January 1, 2008 to the present. Cartagz simply argues an incomplete sentence tautology regarding relevance: "Information about those in control of Online Guru at the relevant time periods Cartagz' claims for copyright infringement, unfair competition, and breach of contract, based on the display of infringing advertisements instead of Cartagz's." Joint Statement at p. 88. The court will limit document production to publicly filed documents which show ownership of Online Guru from 2015 to the present.
This last group requests production of "advertising data" records of Cartagz, CA Reg, and "all" "advertising data." The pertinent requests are:
"Advertising data" is described in the Joint Statement as: "The term "ADVERTISING DATA" is neither vague nor ambiguous: the request clearly defines it as `data that contains impressions, clicks, click-through rates, and conversion rates for advertisers publishing advertisements on ANY ONLINE GURU website.'" Joint Statement at 100. Online Guru does not indicate total ignorance of what is meant in the context of this case by "impressions," clicks, "click through rates" and "conversion rates." Rather, Online Guru argues:
Joint Statement at 101.
Nor does Online Guru argue that compilation of such data is not possible.
However, a document production request is just that—a request for existing documents or data. It does not require a party to make a de novo data compilation or investigation. That is, it is one thing to ask for documents already in existence which reflect the data requested, and quite another to require the responding party to laboriously compile the data in the first instance. However, existing data that is easily retrievable from a data base by making known computer queries may be the subject of request.
The court understands that "data" as defined may have relevance to the copyright infringement case with respect to potential damages. Thus, for Requests 21 and 22, and to the extent such data in the possession of Online Guru already exists in raw form which can be retrieved from a data base without undue expense
Request 23 asking for "all advertising data" without regard to entity is overbroad and rejected. No response is required.
IT IS HEREBY ORDERED that:
1. No production need be made to Requests, 4, 5, 6, 7, 8, 11, 12, 13, 14, 15, 16, and 23.
2. A production as limited in this Order need be made for Requests 2, 3, 9, 10, 17, 20, 21, 22.
3. Production must be made for requests 3, 19 without limitation.
4. The parties shall agree to a protective order with respect to those requests where the undersigned has indicated a protective order is necessary by May 11, 2018;
5. All production must be made no later than May 14, 2018 and if a review is sought of this Order, production must be made as to those requests not subject to the review by the above date.
6. This Order resolves ECF No. 15.
