1 2 3 6 7 ROBLOX CORPORATION, et al., Case No. 22-cv-04476-SI
8 Plaintiffs, ORDER RE: DISCOVERY 9 v. Re: Dkt. Nos. 99, 104, 108, 109, 111 10 WOWWEE GROUP LIMITED, et al., 11 Defendants.
12 13 14 Before the Court are several discovery disputes between the parties. On June 26, 2023, the 15 parties filed a joint discovery letter brief concerning plaintiffs’ request to compel various discovery 16 from defendants. Dkt. No. 99. On July 19, the parties filed a joint discovery letter brief concerning 17 defendants’ request to compel various discovery from plaintiffs. Dkt. No. 104. In each of these 18 briefs the non-moving party indicated it would produce responsive documents to satisfy some of the 19 requests. 20 On August 11, the parties filed a joint letter brief concerning plaintiffs’ request to compel 21 defendants to add Peter Yanofsky as a custodian. Dkt. No. 108. Defendants asserted they were not 22 given enough time to respond to this last letter brief and filed a follow-up brief on August 14. Dkt. 23 No. 109. The Court ordered further briefing to address whether any of the disputes in the June 26 24 and July 19 letter briefs had been resolved. Dkt. No. 110. The parties responded with a 25 supplemental letter brief on August 17. The Court has reviewed the relevant briefing and 26 attachments, and rules as follows: 27 1 A. June 26, 2023 letter brief 2 1. Conception, design, and development of the products at issue. The parties on 3 both sides of this case sought discovery concerning dismissed works1 from the other while limiting 4 their own production. Defendants have limited their production of documents related to the 5 conception, design, or development of the dolls at issue to those that relate to the Cindy, Lindsey, 6 Kenneth, and Dennis avatars, and Jazwares Brookhaven Customer Figurine, Stylz Salon Stylist 7 Figurine, or Claire Dancefiend Figurine. Dkt. No. 99 at 3, 5; Dkt. No. 112 at 3. Defendants argue 8 that this limitation is proper because references to dismissed works are irrelevant. Dkt. No. 99 at 5. 9 Plaintiffs argue that this limitation would excuse defendants from producing documents even if the 10 document said “let’s copy Roblox’s avatars,” which would be relevant even if the documents did 11 not directly name the specific works at issue. Id. at 3. The Court agrees that defendants’ limitation 12 excludes potentially relevant information. Defendants are hereby ordered to produce documents 13 without this limitation. 14 15 2. Related products. Plaintiffs argue that defendants have failed to produce 16 “documents addressing the conception, design, development, and promotion of products related to 17 the My Avastars Fashion Dolls.” Dkt. No. 112 at 5. Specifically, plaintiffs argue that defendants 18 have failed to produce documents related to the “redeemable code advertised with the dolls” and 19 “the Roblox experience that was intended to accompany the dolls.” Id. Defendants argue that 20 plaintiffs’ request for documents concerning “related products” is vague and that plaintiffs should 21 be required to specify the request. Dkt. No. 99 at 5. Defendants are hereby ordered to produce 22 documents related to the redeemable code and any online game or experience that was intended to 23 accompany the dolls. To the extent plaintiffs believe there are other related products, however, 24 plaintiffs must identify them. 25 26 27 1 3. Advertising, promotion, and distribution. Plaintiffs requested defendants produce 2 “All Documents and Things related to marketing efforts or initiatives by [defendants] to promote, 3 advertise, or sell My Avastars Fashion Dolls . . . .” Dkt. No. 99-4. Defendants agreed to produce 4 only those “formal marketing plans, press releases, and advertisements that were released to the 5 public.” Defendants are hereby ordered to produce all responsive non-privileged documents, not 6 just those documents that were released to the public. 7 Plaintiffs also request the Court to compel defendants to produce “All Documents 8 addressing website traffic for and sales data from the MyAvastars.com website.” Dkt. No. 99-4 at 9 28; Dkt. No. 112 at 5. The Court finds that the request for documents concerning sales data is 10 reasonably calculated to lead to the discovery of admissible evidence, but the request for documents 11 concerning website traffic is not. Accordingly, the Court orders defendants to produce all 12 responsive non-privileged documents as to the sales data, but not the website traffic. 13 14 4. Roblox and its intellectual property. Plaintiffs argue that defendants improperly 15 narrowed their responses to plaintiffs’ RFP Nos. 25–31 and 39. The Court agrees. Defendants are 16 ordered to produce all responsive non-privileged documents. 17 18 5. Other Allegations of infringement. Plaintiffs argue that defendants improperly 19 narrowed their response to plaintiffs’ RFP No. 42, which seeks “[a]ll Documents related to any and 20 all allegations of copyright infringement against You, including but not limited to cease and desist 21 letters and civil court or other complaints within the past seven (7) years.” Dkt. No. 99-4; Dkt. No. 22 112 at 6. Further, plaintiffs argue that the parties’ dispute with respect to this RFP may be resolvable 23 but that defendants have not produced any responsive documents related to cases other than this 24 one. Dkt. No. 112 at 6. The Court orders defendants to produce all responsive, non-privileged 25 documents. 26 27 6. Documents related to this action. Plaintiffs also seek an order compelling 1 specifically RFP Nos. 37–41, 46, and 48–50. Dkt. No. 112 at 5. 2 The Court finds that defendants’ objections to RFP Nos. 37, 40, and 41 are appropriate. 3 As to RFP No. 39, the Court orders defendants to produce responsive, non-privileged annual 4 reports related to Roblox, Roblox Copyrights, Roblox Trademarks, or this Action, but does not order 5 production of other annual reports. 6 As to RFPs 38, 46, and 48–50, the Court orders defendants to produce all responsive, non- 7 privileged documents. 8 9 B. July 19, 2023 letter brief. 10 1. Documents relating to the conception, design, and development of Avatar Bases 11 and Avatars. As noted above, the parties on both sides of this case have sought discovery from 12 each other concerning the dismissed works while limiting their own production to exclude the 13 dismissed works. Plaintiffs have limited their production of documents relating to the conception, 14 design, and development of the Avatars to the Cindy, Lindsey, Kenneth, and Dennis avatars. Dkt. 15 No. 111 at 3. They eventually broadened their production to include documents relating to the 16 “Roblox Girl” Avatar Base and the blocky avatar base, but only going back to 2013. Plaintiffs argue 17 that the request is not reasonably limited in time, but defendants point out that the Avatar Bases 18 were conceived before 2013. Dkt. No. 104-2 at 10. The Court agrees with defendants that these 19 documents are still relevant to plaintiffs’ trade dress claims and orders plaintiffs to produce all 20 responsive, non-privileged documents without limitation as to time. 21 22 2. Documents relating to LEGO and Minecraft. Defendants request the Court to 23 compel plaintiffs to produce documents relating to LEGO or Minecraft that also relate to the Roblox 24 Avatars or Jazwares toys. Dkt. No. 111 at 4. The Court agrees and orders plaintiffs to produce all 25 responsive, non-privileged documents. 26 27 3. Documents relating to plaintiffs’ alleged damages. Defendants also seek to 1 Roblox and RFP No. 15 to Jazwares. Dkt. No. 111 at 4. Plaintiffs argue that they have produced 2 responsive documents but do not have any documents responsive to RFP Nos. 18–20. To the extent 3 plaintiffs have responsive documents in their custody, possession, or control, the Court orders 4 plaintiffs to produce those documents.
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1 2 3 6 7 ROBLOX CORPORATION, et al., Case No. 22-cv-04476-SI
8 Plaintiffs, ORDER RE: DISCOVERY 9 v. Re: Dkt. Nos. 99, 104, 108, 109, 111 10 WOWWEE GROUP LIMITED, et al., 11 Defendants.
12 13 14 Before the Court are several discovery disputes between the parties. On June 26, 2023, the 15 parties filed a joint discovery letter brief concerning plaintiffs’ request to compel various discovery 16 from defendants. Dkt. No. 99. On July 19, the parties filed a joint discovery letter brief concerning 17 defendants’ request to compel various discovery from plaintiffs. Dkt. No. 104. In each of these 18 briefs the non-moving party indicated it would produce responsive documents to satisfy some of the 19 requests. 20 On August 11, the parties filed a joint letter brief concerning plaintiffs’ request to compel 21 defendants to add Peter Yanofsky as a custodian. Dkt. No. 108. Defendants asserted they were not 22 given enough time to respond to this last letter brief and filed a follow-up brief on August 14. Dkt. 23 No. 109. The Court ordered further briefing to address whether any of the disputes in the June 26 24 and July 19 letter briefs had been resolved. Dkt. No. 110. The parties responded with a 25 supplemental letter brief on August 17. The Court has reviewed the relevant briefing and 26 attachments, and rules as follows: 27 1 A. June 26, 2023 letter brief 2 1. Conception, design, and development of the products at issue. The parties on 3 both sides of this case sought discovery concerning dismissed works1 from the other while limiting 4 their own production. Defendants have limited their production of documents related to the 5 conception, design, or development of the dolls at issue to those that relate to the Cindy, Lindsey, 6 Kenneth, and Dennis avatars, and Jazwares Brookhaven Customer Figurine, Stylz Salon Stylist 7 Figurine, or Claire Dancefiend Figurine. Dkt. No. 99 at 3, 5; Dkt. No. 112 at 3. Defendants argue 8 that this limitation is proper because references to dismissed works are irrelevant. Dkt. No. 99 at 5. 9 Plaintiffs argue that this limitation would excuse defendants from producing documents even if the 10 document said “let’s copy Roblox’s avatars,” which would be relevant even if the documents did 11 not directly name the specific works at issue. Id. at 3. The Court agrees that defendants’ limitation 12 excludes potentially relevant information. Defendants are hereby ordered to produce documents 13 without this limitation. 14 15 2. Related products. Plaintiffs argue that defendants have failed to produce 16 “documents addressing the conception, design, development, and promotion of products related to 17 the My Avastars Fashion Dolls.” Dkt. No. 112 at 5. Specifically, plaintiffs argue that defendants 18 have failed to produce documents related to the “redeemable code advertised with the dolls” and 19 “the Roblox experience that was intended to accompany the dolls.” Id. Defendants argue that 20 plaintiffs’ request for documents concerning “related products” is vague and that plaintiffs should 21 be required to specify the request. Dkt. No. 99 at 5. Defendants are hereby ordered to produce 22 documents related to the redeemable code and any online game or experience that was intended to 23 accompany the dolls. To the extent plaintiffs believe there are other related products, however, 24 plaintiffs must identify them. 25 26 27 1 3. Advertising, promotion, and distribution. Plaintiffs requested defendants produce 2 “All Documents and Things related to marketing efforts or initiatives by [defendants] to promote, 3 advertise, or sell My Avastars Fashion Dolls . . . .” Dkt. No. 99-4. Defendants agreed to produce 4 only those “formal marketing plans, press releases, and advertisements that were released to the 5 public.” Defendants are hereby ordered to produce all responsive non-privileged documents, not 6 just those documents that were released to the public. 7 Plaintiffs also request the Court to compel defendants to produce “All Documents 8 addressing website traffic for and sales data from the MyAvastars.com website.” Dkt. No. 99-4 at 9 28; Dkt. No. 112 at 5. The Court finds that the request for documents concerning sales data is 10 reasonably calculated to lead to the discovery of admissible evidence, but the request for documents 11 concerning website traffic is not. Accordingly, the Court orders defendants to produce all 12 responsive non-privileged documents as to the sales data, but not the website traffic. 13 14 4. Roblox and its intellectual property. Plaintiffs argue that defendants improperly 15 narrowed their responses to plaintiffs’ RFP Nos. 25–31 and 39. The Court agrees. Defendants are 16 ordered to produce all responsive non-privileged documents. 17 18 5. Other Allegations of infringement. Plaintiffs argue that defendants improperly 19 narrowed their response to plaintiffs’ RFP No. 42, which seeks “[a]ll Documents related to any and 20 all allegations of copyright infringement against You, including but not limited to cease and desist 21 letters and civil court or other complaints within the past seven (7) years.” Dkt. No. 99-4; Dkt. No. 22 112 at 6. Further, plaintiffs argue that the parties’ dispute with respect to this RFP may be resolvable 23 but that defendants have not produced any responsive documents related to cases other than this 24 one. Dkt. No. 112 at 6. The Court orders defendants to produce all responsive, non-privileged 25 documents. 26 27 6. Documents related to this action. Plaintiffs also seek an order compelling 1 specifically RFP Nos. 37–41, 46, and 48–50. Dkt. No. 112 at 5. 2 The Court finds that defendants’ objections to RFP Nos. 37, 40, and 41 are appropriate. 3 As to RFP No. 39, the Court orders defendants to produce responsive, non-privileged annual 4 reports related to Roblox, Roblox Copyrights, Roblox Trademarks, or this Action, but does not order 5 production of other annual reports. 6 As to RFPs 38, 46, and 48–50, the Court orders defendants to produce all responsive, non- 7 privileged documents. 8 9 B. July 19, 2023 letter brief. 10 1. Documents relating to the conception, design, and development of Avatar Bases 11 and Avatars. As noted above, the parties on both sides of this case have sought discovery from 12 each other concerning the dismissed works while limiting their own production to exclude the 13 dismissed works. Plaintiffs have limited their production of documents relating to the conception, 14 design, and development of the Avatars to the Cindy, Lindsey, Kenneth, and Dennis avatars. Dkt. 15 No. 111 at 3. They eventually broadened their production to include documents relating to the 16 “Roblox Girl” Avatar Base and the blocky avatar base, but only going back to 2013. Plaintiffs argue 17 that the request is not reasonably limited in time, but defendants point out that the Avatar Bases 18 were conceived before 2013. Dkt. No. 104-2 at 10. The Court agrees with defendants that these 19 documents are still relevant to plaintiffs’ trade dress claims and orders plaintiffs to produce all 20 responsive, non-privileged documents without limitation as to time. 21 22 2. Documents relating to LEGO and Minecraft. Defendants request the Court to 23 compel plaintiffs to produce documents relating to LEGO or Minecraft that also relate to the Roblox 24 Avatars or Jazwares toys. Dkt. No. 111 at 4. The Court agrees and orders plaintiffs to produce all 25 responsive, non-privileged documents. 26 27 3. Documents relating to plaintiffs’ alleged damages. Defendants also seek to 1 Roblox and RFP No. 15 to Jazwares. Dkt. No. 111 at 4. Plaintiffs argue that they have produced 2 responsive documents but do not have any documents responsive to RFP Nos. 18–20. To the extent 3 plaintiffs have responsive documents in their custody, possession, or control, the Court orders 4 plaintiffs to produce those documents. To the extent plaintiffs do not have such responsive 5 documents, plaintiffs shall so state under oath. 6 7 4. Documents relating to Roblox’s updated Terms of Use. Defendants seek to 8 compel documents responsive to RFP Nos. 30, 31, 53, and 54, which relate to Roblox’s updated 9 Terms of Use. Dkt. No. 111 at 4. Plaintiffs argue that these documents are not relevant. Dkt. No. 10 112 at 7. The Court notes that both parties have sought documents from the other concerning 11 interactions with third parties and that the requested documents are relevant to defendants’ 12 arguments concerning updates to the Terms of Use. See section (A)(5), supra. While the Court 13 recognizes that many responsive documents will be privileged, plaintiffs are hereby compelled to 14 produce all responsive non-privileged documents. 15 16 5. Form of production. Defendants argue that plaintiffs have improperly narrowed 17 the form of production. Dkt. No. 111 at 4. The Court hereby orders both parties to produce 18 documents in the form specified in the parties’ ESI stipulation unless the parties agree otherwise. 19 20 C. August 11, 2023 and August 17, 2023 letter briefs 21 Plaintiffs argue that defendants should be compelled to add Peter Yanofsky as a custodian. 22 Dkt. No. 108 at 1. Yanofsky is the President of Gramps Goods, a Director of WowWee Group 23 Limited, and the President, Secretary, and Director of WowWee USA. Id. In an unrelated case, 24 Yanofsky stated in an affidavit that as president of WowWee USA, he is “intimately familiar with 25 the business operations of WowWee.” Id. Defendants have described themselves as “family-owned 26 toymaker[s]” and Yanofsky is directly involved in three of the four defendant companies. Id. 27 Plaintiffs argue that Yanofsky should be included as a custodian because of his knowledge of 1 argue that the apex doctrine does not apply because defendants are small companies and Yanofsky 2 || has intimate knowledge of those companies’ operations. Jd. (citing Ray v. BlueHippo Funding, 3 || LLC, No. 06-cv-1807, 2008 WL 4830747, at *2 (N.D. Cal. Nov. 6, 2008)). 4 Defendants assert that Yanofsky is not a relevant custodian because he lacked any 5 meaningful involvement with the My Avastars products. Dkt. No. 109 at 1. Defendants have 6 || identified several other custodians who did have knowledge of relevant facts. Id. at 2. Defendants 7 further argue that Yanofsky is an apex custodian. Jd. 8 Plaintiffs’ request to compel defendants to add Yanofsky as a custodian is denied. Plaintiffs 9 || have made no showing that Yanofsky has relevant information, much less that he has information 10 || that would not be discoverable through the other custodians named by defendants. The case cited 11 by plaintiffs concerned a deposition of a person the parties agreed was “a percipient witness who 12 possesses relevant information.” Ray v. BlueHippo Funding, LLC, No. 06-cv-1807, 2008 WL 5 13 4830747, at *2 (N.D. Cal. Nov. 6, 2008). Here, because plaintiffs only speculate that Yanofsky 14 || must have relevant information, the Court does not find good cause to grant their request. 3 15 If the parties will be unable to complete the required discovery prior to the September 13, 16 || 2023 close of fact discovery, they may file a request to change the discovery deadlines.
IT IS SO ORDERED. 19 Dated: August 25, 2023 20 thi. \ ite SUSAN ILLSTON United States District Judge 22 23 24 25 26 27 28