1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 HAROLD DAVIS, Case No. 19-cv-07650-HSG (TSH)
8 Plaintiff, DISCOVERY ORDER 9 v. Re: Dkt. Nos. 127, 131, 137, 140 10 PINTEREST, INC., 11 Defendant.
12 13 On the last day to move to compel, Pinterest filed two motions. The first was a sweeping 14 motion to compel directed at Harold Davis’s claims of infringement. ECF No. 127. The Court is 15 unable to discern why Pinterest filed this motion at the last possible moment. The discovery 16 requests concerning Pinterest’s license defense seem like the sort of thing Pinterest would want to 17 move to compel at the beginning of discovery, not at the very end. As for the Pixsy documents 18 and information, in Pinterest’s own telling of the story, it should have known it wanted those 19 materials since at least July of this year. The timing of the other motion – for a determination that 20 four particular documents produced by Pixsy are not entitled to work product protection (ECF No. 21 131) – makes sense because that dispute did not arise until August 30, 2021. Nonetheless, the 22 Court is a little bit skeptical about how much the second motion remains genuinely in dispute, 23 given Davis’s own affirmative use of one of those documents in a deposition of a Pinterest 24 witness, which he had to have understood would waive any claim of work product protection. 25 In any event, both motions made factual assertions that were unsupported by evidence, so 26 the Court requested supplemental briefing. ECF No. 132. The Court has reviewed the 27 supplemental briefing together with some 600+ pages of exhibits (ECF Nos. 133, 134, 137), as 1 140). The Court held a hearing on November 8, 2021 and now issues this order. 2 A. Motion to Compel 3 1. Timeliness 4 In ECF No. 63, Judge Gilliam issued a scheduling order that provided that July 2, 2021 5 was the close of fact discovery, except that “Defendant may pursue discovery regarding the 6 identified alleged infringements through September 3, 2021.” In ECF No. 90, Judge Gilliam 7 issued another order stating “PURSUANT TO STIPULATION, the July 2, 2021 deadline to 8 complete fact discovery is HEREBY EXTENDED to August 6, 2021 solely for purposes of taking 9 depositions. All other dates and deadlines set forth in the Court’s Scheduling Order (ECF No. 63), 10 including the July 2, 2021 deadline to complete written discovery, remain in effect.” 11 Davis argues that ECF No. 90 had the effect of ending all written discovery as of July 2, 12 including written discovery about alleged infringements. On this theory, Pinterest’s motion to 13 compel was due by July 9 and is therefore untimely. However, the Court disagrees. The Court 14 interprets ECF No. 90 as changing the general close of fact discovery from July 2 to August 6 for 15 purposes of depositions and leaving every other deadline in ECF No. 63 intact. Thus, the deadline 16 for Pinterest to pursue discovery regarding the identified alleged infringements remained 17 September 3, 2021. The Court also thinks that discovery “regarding” the alleged infringements 18 includes defenses to those allegations and discovery about the damages caused by the alleged 19 infringements and therefore embraces all of the subjects in Pinterest’s present motion to compel. 20 Accordingly, Pinterest’s motion is timely. 21 However, as noted above, even though the rules permit it, that does not mean it is a good 22 idea to wait until the last possible moment to move to compel on a broad swath of documents and 23 information. That type of poor planning can limit the usefulness of any discovery that is obtained, 24 for example, in depositions, in expert reports, or on a summary judgment motion. 25 2. Merits 26 Interrogatory (“rog”) No. 4 asked “For each Work In Suit, identify by date, person, and 27 agreement every occasion on which any other person has been licensed or authorized to copy, 1 Copyright Act with respect to the work).” Rog 5 asked “In each case in which You have 2 authorized anyone to grant licenses to any Work In Suit, describe the license, including the person 3 authorized, the work(s) covered by the authorization, the right(s) covered by the authorization, and 4 the term of the authorization.” Davis objected to both rogs on overbreadth and burden grounds, 5 then said there is no one authorized to display his works in suit on Pinterest’s website. His 6 responses also cited some documents in a Rule 33(d) reference. 7 At the hearing, Pinterest clarified two things about rog 4. First, the rog does not ask for 8 every image of Davis’s works on the internet that was authorized. Rather, it seeks the 9 identification of the acts that did the authorizing. That could be a contract that Davis entered into. 10 Or, if Davis entered into a series of agreements with various websites that allowed them and their 11 users to display his works (and Pinterest thinks this is the case), it could be both those agreements 12 and the subsequent posting of images of his works on those websites that provided the 13 authorization for users to further post or copy them elsewhere. Second, a useful answer to 14 Pinterest is for Davis to answer as much of this rog as he is able to and then describe what 15 information he cannot provide. For example, if Davis entered into an agreement that allowed a 16 website to display his works in suit and to authorize others to display his works in suit, he could 17 identify that agreement and then state what information he has or does not have about what further 18 authorization that website provided to others. In Pinterest’s view, the agreement may be relevant 19 to a license defense, and Davis’s lack of knowledge concerning further acts of authorization may 20 be relevant to damages (on the theory that Davis does not know or bother to track who all is 21 authorized to display his works). The Court had initially feared that rog 4 was impossible for 22 Davis to answer, but it seems that is the point. It is a legitimate tactic in discovery to ask your 23 opponent for information you’re pretty sure they don’t have, if you are content with an answer 24 saying that. Accordingly, the Court orders Davis to answer rog 4 to the best of his ability and to 25 state what portions of rog 4 he lacks sufficient information to answer. 26 Rog 5 is not overbroad and there is no reason why Davis should not be able to answer it. 27 In fact, Davis maintains has answered it, but Pinterest has provided evidence that Davis’s answer 1 With respect to RFPs 3-5 and 12-13, Davis’s responses stated that he would produce the 2 requested information. However, Pinterest has submitted evidence that raises substantial doubt 3 that he has done so. The Court does not see that any of those RFPs are burdensome because Davis 4 is one person, and the RFPs seek documents that are in his possession, custody or control. 5 Accordingly, the Court orders Davis to conduct another search of his documents and to produce 6 the non-privileged ones that are responsive to these RFPs. 7 Rog 8 asks “Describe in detail each occasion on which each Work In Suit has been 8 uploaded by You or with Your authorization to a website for online purchase, distribution, or 9 viewing, including but not limited to the name of the website, the location (URL) of the uploaded 10 content, the identity of uploader, and the date of the upload.” This rog seeks an internet-wide 11 search of every instance in which Davis’s works in suit have been uploaded with his authorization. 12 That might seem like a crazy request, but it turns out that Davis has hired a company called Pixsy 13 to perform internet-wide searches for his works in suit and to determine where the images came 14 from. In any event, as with rog 4, a useful answer to Pinterest would be for Davis to answer rog 8 15 as much as he can and then to explain why he can’t answer all of the rog.
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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 HAROLD DAVIS, Case No. 19-cv-07650-HSG (TSH)
8 Plaintiff, DISCOVERY ORDER 9 v. Re: Dkt. Nos. 127, 131, 137, 140 10 PINTEREST, INC., 11 Defendant.
12 13 On the last day to move to compel, Pinterest filed two motions. The first was a sweeping 14 motion to compel directed at Harold Davis’s claims of infringement. ECF No. 127. The Court is 15 unable to discern why Pinterest filed this motion at the last possible moment. The discovery 16 requests concerning Pinterest’s license defense seem like the sort of thing Pinterest would want to 17 move to compel at the beginning of discovery, not at the very end. As for the Pixsy documents 18 and information, in Pinterest’s own telling of the story, it should have known it wanted those 19 materials since at least July of this year. The timing of the other motion – for a determination that 20 four particular documents produced by Pixsy are not entitled to work product protection (ECF No. 21 131) – makes sense because that dispute did not arise until August 30, 2021. Nonetheless, the 22 Court is a little bit skeptical about how much the second motion remains genuinely in dispute, 23 given Davis’s own affirmative use of one of those documents in a deposition of a Pinterest 24 witness, which he had to have understood would waive any claim of work product protection. 25 In any event, both motions made factual assertions that were unsupported by evidence, so 26 the Court requested supplemental briefing. ECF No. 132. The Court has reviewed the 27 supplemental briefing together with some 600+ pages of exhibits (ECF Nos. 133, 134, 137), as 1 140). The Court held a hearing on November 8, 2021 and now issues this order. 2 A. Motion to Compel 3 1. Timeliness 4 In ECF No. 63, Judge Gilliam issued a scheduling order that provided that July 2, 2021 5 was the close of fact discovery, except that “Defendant may pursue discovery regarding the 6 identified alleged infringements through September 3, 2021.” In ECF No. 90, Judge Gilliam 7 issued another order stating “PURSUANT TO STIPULATION, the July 2, 2021 deadline to 8 complete fact discovery is HEREBY EXTENDED to August 6, 2021 solely for purposes of taking 9 depositions. All other dates and deadlines set forth in the Court’s Scheduling Order (ECF No. 63), 10 including the July 2, 2021 deadline to complete written discovery, remain in effect.” 11 Davis argues that ECF No. 90 had the effect of ending all written discovery as of July 2, 12 including written discovery about alleged infringements. On this theory, Pinterest’s motion to 13 compel was due by July 9 and is therefore untimely. However, the Court disagrees. The Court 14 interprets ECF No. 90 as changing the general close of fact discovery from July 2 to August 6 for 15 purposes of depositions and leaving every other deadline in ECF No. 63 intact. Thus, the deadline 16 for Pinterest to pursue discovery regarding the identified alleged infringements remained 17 September 3, 2021. The Court also thinks that discovery “regarding” the alleged infringements 18 includes defenses to those allegations and discovery about the damages caused by the alleged 19 infringements and therefore embraces all of the subjects in Pinterest’s present motion to compel. 20 Accordingly, Pinterest’s motion is timely. 21 However, as noted above, even though the rules permit it, that does not mean it is a good 22 idea to wait until the last possible moment to move to compel on a broad swath of documents and 23 information. That type of poor planning can limit the usefulness of any discovery that is obtained, 24 for example, in depositions, in expert reports, or on a summary judgment motion. 25 2. Merits 26 Interrogatory (“rog”) No. 4 asked “For each Work In Suit, identify by date, person, and 27 agreement every occasion on which any other person has been licensed or authorized to copy, 1 Copyright Act with respect to the work).” Rog 5 asked “In each case in which You have 2 authorized anyone to grant licenses to any Work In Suit, describe the license, including the person 3 authorized, the work(s) covered by the authorization, the right(s) covered by the authorization, and 4 the term of the authorization.” Davis objected to both rogs on overbreadth and burden grounds, 5 then said there is no one authorized to display his works in suit on Pinterest’s website. His 6 responses also cited some documents in a Rule 33(d) reference. 7 At the hearing, Pinterest clarified two things about rog 4. First, the rog does not ask for 8 every image of Davis’s works on the internet that was authorized. Rather, it seeks the 9 identification of the acts that did the authorizing. That could be a contract that Davis entered into. 10 Or, if Davis entered into a series of agreements with various websites that allowed them and their 11 users to display his works (and Pinterest thinks this is the case), it could be both those agreements 12 and the subsequent posting of images of his works on those websites that provided the 13 authorization for users to further post or copy them elsewhere. Second, a useful answer to 14 Pinterest is for Davis to answer as much of this rog as he is able to and then describe what 15 information he cannot provide. For example, if Davis entered into an agreement that allowed a 16 website to display his works in suit and to authorize others to display his works in suit, he could 17 identify that agreement and then state what information he has or does not have about what further 18 authorization that website provided to others. In Pinterest’s view, the agreement may be relevant 19 to a license defense, and Davis’s lack of knowledge concerning further acts of authorization may 20 be relevant to damages (on the theory that Davis does not know or bother to track who all is 21 authorized to display his works). The Court had initially feared that rog 4 was impossible for 22 Davis to answer, but it seems that is the point. It is a legitimate tactic in discovery to ask your 23 opponent for information you’re pretty sure they don’t have, if you are content with an answer 24 saying that. Accordingly, the Court orders Davis to answer rog 4 to the best of his ability and to 25 state what portions of rog 4 he lacks sufficient information to answer. 26 Rog 5 is not overbroad and there is no reason why Davis should not be able to answer it. 27 In fact, Davis maintains has answered it, but Pinterest has provided evidence that Davis’s answer 1 With respect to RFPs 3-5 and 12-13, Davis’s responses stated that he would produce the 2 requested information. However, Pinterest has submitted evidence that raises substantial doubt 3 that he has done so. The Court does not see that any of those RFPs are burdensome because Davis 4 is one person, and the RFPs seek documents that are in his possession, custody or control. 5 Accordingly, the Court orders Davis to conduct another search of his documents and to produce 6 the non-privileged ones that are responsive to these RFPs. 7 Rog 8 asks “Describe in detail each occasion on which each Work In Suit has been 8 uploaded by You or with Your authorization to a website for online purchase, distribution, or 9 viewing, including but not limited to the name of the website, the location (URL) of the uploaded 10 content, the identity of uploader, and the date of the upload.” This rog seeks an internet-wide 11 search of every instance in which Davis’s works in suit have been uploaded with his authorization. 12 That might seem like a crazy request, but it turns out that Davis has hired a company called Pixsy 13 to perform internet-wide searches for his works in suit and to determine where the images came 14 from. In any event, as with rog 4, a useful answer to Pinterest would be for Davis to answer rog 8 15 as much as he can and then to explain why he can’t answer all of the rog. Pinterest maintains that 16 a statement by Davis that he is not able to identify all of the images of his works in suit that have 17 been uploaded by him or with his authorization is relevant to a license defense and to damages. 18 Fair enough. Accordingly, the Court orders Davis to answer rog 8 to the best of his ability and to 19 state what information sought by rog 8 he is not able to provide. 20 For RFPs 15 and 32, below the Court addresses the four specific Pixsy documents that are 21 the subject of the work product dispute. Aside from those four, Pinterest appears to be moving to 22 compel the universe of Pixsy documents and information and communications with Pixsy that are 23 within Davis’s possession or access, over Davis’s claim of work product protection.1 The Court 24 finds this problematic, for two reasons. First, in general, a motion to compel aimed at a claim of 25 privilege or work product should be directed to specific documents, rather than categories or 26 concepts. That’s why Rule 26 requires a privilege log. This is especially true for a claim of work 27 1 product protection, where the content of the document is usually determinative. Second, the Court 2 has reviewed the Pixsy documents the parties have submitted. Based on that review, the Court 3 would want to see a document-by-document privilege log to understand the basis for a work 4 product claim. It is possible that after seeing the log, the Court would also want to perform an in 5 camera review of certain documents before the Court would be comfortable ordering their 6 production. 7 On the other hand, the burden of establishing work product protection rests on the party 8 seeking that protection. One required step in asserting a claim of work product protection is to 9 serve a privilege log pursuant to Rule 26(b)(5)(A)(ii). Here, Davis hasn’t done that. As a result, 10 Pinterest not only does not know which documents Davis is withholding and why they are work 11 product, it also doesn’t know how many. When Davis’s counsel attempted to explain during the 12 hearing the basis for the work product claim, he supplied one that would also have applied to all of 13 the Pixsy documents and communications that Davis did produce (and is not seeking to claw 14 back), leaving the work product claim somewhat difficult to understand. Accordingly, for RFPs 15 15 and 32, the Court orders Davis to produce a privilege log of the Pixsy documents and 16 communications he is withholding based on work product. 17 The Court realizes this relief may not amount to much, as the deadline to move to compel 18 has expired, but this is an example of why it is not a good idea to wait until the last day to move to 19 compel to file an important motion: Some discovery disputes proceed in stages, i.e., you need to 20 win the first motion before you can bring the second one. That is often the case with disputes over 21 claims of privilege, which typically have to be decided on a document-by-document basis, and 22 thus often trail disputes over logging. The Court is not going to let Davis defeat a motion to 23 compel just by speaking the words “work product” – he’s got to put some work into that claim of 24 work product and produce a privilege log. But since the deadline to file motions to compel has 25 passed, it may be there’s not much Pinterest can do with that log when it gets it. 26 RFP 43 requested “[a]ll settlement agreements You have entered into regarding alleged 27 infringements of Your photographs.” Davis’s only stated objection – that the term “settlement 1 confidential settlement agreements, but since there is a protective order in this case, there is no 2 basis to withhold the confidential ones. Pinterest has made an evidentiary showing that Davis has 3 not produced all responsive agreements, and Davis does not disagree. The Court orders Davis to 4 produce those that are within his possession, custody or control. 5 Accordingly, Pinterest’s motion to compel is granted in part and denied in part as stated 6 above. All discovery that Davis must provide as a result of this order must be provided within 21 7 days of this order. The Court chooses this deadline because at the hearing Davis said he could 8 comply with it. 9 B. Work Product Claim 10 Davis has asserted a work product claim over four documents produced by Pixsy in 11 response to a subpoena by Pinterest: Pixsy 221-222, Pixsy 223-227, Pixsy 228 and Pixsy 229. 12 However, during his August 19, 2021 deposition, Davis gave extensive testimony about all four 13 exhibits. See ECF No. 137-3 at 215-40 & 293-302. “[V]oluntarily testifying regarding protected 14 information waives any claim to work product.” Hologram USA, Inc. v. Pulse Evolution Corp., 15 2016 U.S. Dist. LEXIS 87323, *9 (D. Nev. July 5, 2016); see also Carrasco v. Campagna, 2007 16 U.S. Dist. LEXIS 97993, *9-10 (N.D. Cal. Jan. 9, 2007) (work product protection waived where 17 witnesses provided deposition testimony about allegedly protected materials absent objection). 18 Further, in a September 29, 2021 deposition of Pinterest, Davis’s counsel questioned the witness 19 about Pixsy 229, see ECF No. 140-1, which was a further waiver of work product protection as to 20 that document. See San Francisco BART Dist. v. Spencer, 2006 U.S. Dist. LEXIS 81679, *4 21 (N.D. Cal. Oct. 23, 2006) (“By using his copy as a de facto deposition exhibit, [counsel] waived 22 any attorney-client or work product privilege that may have protected the document.”); Meoli v. 23 Am. Med. Serv. of San Diego, 287 B.R. 808, 817 (S.D. Cal. Jan. 9, 2003) (“Voluntary disclosure of 24 attorney work product to an adversary in the litigation defeats the policy underlying the 25 privilege.”). 26 Davis responds that Pixsy produced the documents, not him, and that paragraph 12 of the 27 protective order (ECF No. 70) provides that the production of work-product protected material 1 these documents is not what gave rise to the waiver. The waiver comes from Davis’s extensive 2 || testimony about these documents without any assertion of work product protection during his 3 deposition, and then for one of the documents the use of it by Davis’s own counsel to depose a 4 || Pinterest witness. 5 Accordingly, the Court finds that Davis has waived any claim of work product protection 6 || over these four documents.” 7 IT IS SO ORDERED. 8 9 Dated: November 8, 2021 10 LU \ - Lj THOMAS S. HIXSON United States Magistrate Judge 12
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Z 18 19 20 21 22 23 24 25 26 27 28 > Pinterest’s unopposed motion to file supplemental evidence (ECF No. 140) is granted.