1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 PAUL TREMBLAY, et al., Case No. 23-cv-03223-AMO
8 Plaintiffs, ORDER GRANTING PLAINTIFFS’ 9 v. MOTION FOR RELIEF FROM DISCOVERY ORDER 10 OPENAI, INC., et al., Re: Dkt. No. 157 Defendants. 11
12 13 Pursuant to Federal Rule of Civil Procedure 72(a) and Northern District of California Civil 14 Local Rule 72-2, Plaintiffs move for relief from Magistrate Judge Robert M. Illman’s 15 Nondispositive Pretrial Order (ECF 154 “Order”). ECF 157 (“Mot”). The Order granted 16 Defendants’ request to compel OpenAI account information, prompts, and outputs for Plaintiffs’ 17 testing of ChatGPT in connection with their pre-suit investigation. On July 15, 2024, this Court 18 gave Defendants an opportunity to respond to Plaintiffs’ motion for relief. See ECF 159. 19 Defendants filed a response on July 24, 2024. ECF 161. Having read the parties’ papers and 20 carefully considered their arguments and the relevant legal authority, the Court hereby GRANTS 21 Plaintiffs’ motion for the following reasons. 22 I. BACKGROUND 23 Plaintiffs, on behalf of themselves and a putative class, assert a claim for direct copyright 24 infringement against OpenAI. First Consolidated Amended Complaint (“FCAC”) (ECF 120). 25 Plaintiffs allege that Defendants’ ChatGPT is powered by software programs known as large 26 language models, which were trained through “copying massive amounts of text and extracting 27 expressive information from it.” FCAC ¶ 2. They allege that their copyrighted books were used 1 FCAC ¶¶ 4-5, 51. Plaintiffs attached to their FCAC an exhibit – Exhibit B – that has prompts used 2 to ask ChatGPT to summarize in detail various parts of Plaintiffs’ books, as well as the outputs 3 produced by ChatGPT. FCAC ¶ 51; FAC Ex. B (ECF 12-2) at 2-40. 4 OpenAI served a document request on Plaintiffs (“RFP 9”), which Defendants 5 subsequently narrowed to seek: “(a) the OpenAI account information for individuals who used 6 ChatGPT to investigate Plaintiffs’ claims; and (b) the prompts and outputs for Plaintiffs’ testing of 7 ChatGPT in connection with their pre-suit ChatGPT testing, including prompts and outputs that 8 did not reproduce or summarize Plaintiffs’ works or otherwise support Plaintiffs’ claims, along 9 with documentation of Plaintiffs’ testing process.” ECF 153 at 1. Plaintiffs offered to produce 10 “full threads of the prompts and outputs” that led to the examples attached in Exhibit B to the 11 FCAC. Id. However, Plaintiffs refused to produce prompts and outputs that were not used in the 12 FCAC, and which did not reproduce or summarize Plaintiffs’ works or support their claims. Id. at 13 2-3. 14 Plaintiffs and Defendants filed a joint discovery statement as required by Magistrate Judge 15 Illman’s standing order. Judge Illman granted Defendants’ request to compel (1) OpenAI account 16 information for individuals who used ChatGPT to investigate Plaintiffs’ claims; (2) the prompts 17 and outputs for Plaintiffs’ testing of ChatGPT in connection with their pre-suit testing, including 18 prompts and outputs that did not reproduce, summarize, or support Plaintiffs’ claims; and 19 (3) documentation of Plaintiffs’ testing process. ECF 154 at 7. The instant motion followed. 20 II. LEGAL STANDARD 21 The standard for review of a magistrate judge’s non-dispositive ruling under Federal Rule 22 of Civil Procedure 72(a) is highly deferential. “The reviewing court may not simply substitute its 23 judgment for that of the deciding court.” Grimes v. City & Cnty. of S.F., 951 F.2d 236, 241 (9th 24 Cir. 1991). Instead, “[a] non-dispositive order entered by a magistrate must be deferred to unless 25 it is ‘clearly erroneous or contrary to law.’” Id. (quoting Fed. R. Civ. P. 72(a)). “There is clear 26 error only when the court is ‘left with the definite and firm conviction that a mistake has been 27 committed.’” Zepeda v. Paypal, Inc., 2014 WL 4354386, at *3 (N.D. Cal. Sept. 2, 2014) (quoting 1 apply or misapplies relevant statutes, case law, or rules of procedure.” Rojas v. Bosch Solar 2 Energy Corp., No. 18-CV-05841-BLF, 2020 WL 6557547, at *3 (N.D. Cal. July 20, 2020) 3 (citation omitted). 4 III. DISCUSSION 5 The Order grants Defendants’ request to compel, finding that the account settings and 6 negative test results are fact work product, that Plaintiffs waived the ability to assert work product 7 protection by placing a large subset of those facts in the FCAC and Exhibit B, and that an 8 evaluation of the negative results and account settings is necessary to Defendants’ ability to 9 understand Plaintiffs’ positive results. ECF 154 at 5-6. Plaintiffs challenge each of these findings 10 as clear error or contrary to law. 11 Federal Rule of Civil Procedure 26 protects disclosure of documents and tangible things 12 “prepared in anticipation of litigation or for trial.” Fed. R. Civ. P. 26(b)(3)(A); see In re Grand 13 Jury Subpoena (Mark Torf/Torf Env’t Mgmt.), 357 F.3d 900, 906 (9th Cir. 2004). Unlike fact 14 work product, “opinion work product” includes “an attorney’s mental impressions, conclusions, 15 opinions, or legal theories developed in anticipation of litigation.” Republic of Ecuador v. 16 Mackay, 742 F.3d 860, 869 n.3 (9th Cir. 2014); see Fed. R. Civ. P. 26(b)(3)(B). It “is virtually 17 undiscoverable.” Mackay, 742 F.3d at 869 n.3 (citations omitted). 18 The Order found that the ChatGPT account settings and negative test results are “more in 19 the nature of fact work product than opinion work product” because they are “more in the nature 20 of bare facts.” ECF 154 at 5-6. This is a misapplication of law as the ChatGPT prompts were 21 queries crafted by counsel and contain counsel’s mental impressions and opinions about how to 22 interrogate ChatGPT, in an effort to vindicate Plaintiffs’ copyrights against the alleged 23 infringements. See Mackay, 742 F.3d at 869 n.3. 24 Plaintiffs also take issue with the Order’s broad finding of waiver as contrary to law. 25 While the central purpose of the work-product doctrine is to “prevent exploitation of a party’s 26 efforts in preparing for litigation,” it is a “qualified” privilege that can be waived by a litigant by 27 “reveal[ing] or plac[ing] the work product at issue during the course of litigation.” United States 1 between a waiver of factual work product and a waiver of opinion work product.” Munguia- 2 Brown v. Equity Residential, 337 F.R.D. 509, 516 (N.D. Cal. 2021). Waiver of fact work product 3 extends to the subject matter of the disclosed work product. See Hernandez v. Tanninen, 604 F.3d 4 1095, 1100 (9th Cir. 2010) (concluding that disclosure of attorney notes constituted a waiver over 5 the subject matter of the disclosed notes). The scope of any waiver “must be closely tailored . . . 6 to the needs of the opposing party” and courts must “be careful to impose a waiver no broader than 7 needed to ensure the fairness of the proceedings before it.” Sanmina, 968 F.3d at 1122, 1124. 8 However, opinion work product is discoverable by waiver only where “mental impressions are at 9 issue in a case and the need for the material is compelling.” Id.
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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 PAUL TREMBLAY, et al., Case No. 23-cv-03223-AMO
8 Plaintiffs, ORDER GRANTING PLAINTIFFS’ 9 v. MOTION FOR RELIEF FROM DISCOVERY ORDER 10 OPENAI, INC., et al., Re: Dkt. No. 157 Defendants. 11
12 13 Pursuant to Federal Rule of Civil Procedure 72(a) and Northern District of California Civil 14 Local Rule 72-2, Plaintiffs move for relief from Magistrate Judge Robert M. Illman’s 15 Nondispositive Pretrial Order (ECF 154 “Order”). ECF 157 (“Mot”). The Order granted 16 Defendants’ request to compel OpenAI account information, prompts, and outputs for Plaintiffs’ 17 testing of ChatGPT in connection with their pre-suit investigation. On July 15, 2024, this Court 18 gave Defendants an opportunity to respond to Plaintiffs’ motion for relief. See ECF 159. 19 Defendants filed a response on July 24, 2024. ECF 161. Having read the parties’ papers and 20 carefully considered their arguments and the relevant legal authority, the Court hereby GRANTS 21 Plaintiffs’ motion for the following reasons. 22 I. BACKGROUND 23 Plaintiffs, on behalf of themselves and a putative class, assert a claim for direct copyright 24 infringement against OpenAI. First Consolidated Amended Complaint (“FCAC”) (ECF 120). 25 Plaintiffs allege that Defendants’ ChatGPT is powered by software programs known as large 26 language models, which were trained through “copying massive amounts of text and extracting 27 expressive information from it.” FCAC ¶ 2. They allege that their copyrighted books were used 1 FCAC ¶¶ 4-5, 51. Plaintiffs attached to their FCAC an exhibit – Exhibit B – that has prompts used 2 to ask ChatGPT to summarize in detail various parts of Plaintiffs’ books, as well as the outputs 3 produced by ChatGPT. FCAC ¶ 51; FAC Ex. B (ECF 12-2) at 2-40. 4 OpenAI served a document request on Plaintiffs (“RFP 9”), which Defendants 5 subsequently narrowed to seek: “(a) the OpenAI account information for individuals who used 6 ChatGPT to investigate Plaintiffs’ claims; and (b) the prompts and outputs for Plaintiffs’ testing of 7 ChatGPT in connection with their pre-suit ChatGPT testing, including prompts and outputs that 8 did not reproduce or summarize Plaintiffs’ works or otherwise support Plaintiffs’ claims, along 9 with documentation of Plaintiffs’ testing process.” ECF 153 at 1. Plaintiffs offered to produce 10 “full threads of the prompts and outputs” that led to the examples attached in Exhibit B to the 11 FCAC. Id. However, Plaintiffs refused to produce prompts and outputs that were not used in the 12 FCAC, and which did not reproduce or summarize Plaintiffs’ works or support their claims. Id. at 13 2-3. 14 Plaintiffs and Defendants filed a joint discovery statement as required by Magistrate Judge 15 Illman’s standing order. Judge Illman granted Defendants’ request to compel (1) OpenAI account 16 information for individuals who used ChatGPT to investigate Plaintiffs’ claims; (2) the prompts 17 and outputs for Plaintiffs’ testing of ChatGPT in connection with their pre-suit testing, including 18 prompts and outputs that did not reproduce, summarize, or support Plaintiffs’ claims; and 19 (3) documentation of Plaintiffs’ testing process. ECF 154 at 7. The instant motion followed. 20 II. LEGAL STANDARD 21 The standard for review of a magistrate judge’s non-dispositive ruling under Federal Rule 22 of Civil Procedure 72(a) is highly deferential. “The reviewing court may not simply substitute its 23 judgment for that of the deciding court.” Grimes v. City & Cnty. of S.F., 951 F.2d 236, 241 (9th 24 Cir. 1991). Instead, “[a] non-dispositive order entered by a magistrate must be deferred to unless 25 it is ‘clearly erroneous or contrary to law.’” Id. (quoting Fed. R. Civ. P. 72(a)). “There is clear 26 error only when the court is ‘left with the definite and firm conviction that a mistake has been 27 committed.’” Zepeda v. Paypal, Inc., 2014 WL 4354386, at *3 (N.D. Cal. Sept. 2, 2014) (quoting 1 apply or misapplies relevant statutes, case law, or rules of procedure.” Rojas v. Bosch Solar 2 Energy Corp., No. 18-CV-05841-BLF, 2020 WL 6557547, at *3 (N.D. Cal. July 20, 2020) 3 (citation omitted). 4 III. DISCUSSION 5 The Order grants Defendants’ request to compel, finding that the account settings and 6 negative test results are fact work product, that Plaintiffs waived the ability to assert work product 7 protection by placing a large subset of those facts in the FCAC and Exhibit B, and that an 8 evaluation of the negative results and account settings is necessary to Defendants’ ability to 9 understand Plaintiffs’ positive results. ECF 154 at 5-6. Plaintiffs challenge each of these findings 10 as clear error or contrary to law. 11 Federal Rule of Civil Procedure 26 protects disclosure of documents and tangible things 12 “prepared in anticipation of litigation or for trial.” Fed. R. Civ. P. 26(b)(3)(A); see In re Grand 13 Jury Subpoena (Mark Torf/Torf Env’t Mgmt.), 357 F.3d 900, 906 (9th Cir. 2004). Unlike fact 14 work product, “opinion work product” includes “an attorney’s mental impressions, conclusions, 15 opinions, or legal theories developed in anticipation of litigation.” Republic of Ecuador v. 16 Mackay, 742 F.3d 860, 869 n.3 (9th Cir. 2014); see Fed. R. Civ. P. 26(b)(3)(B). It “is virtually 17 undiscoverable.” Mackay, 742 F.3d at 869 n.3 (citations omitted). 18 The Order found that the ChatGPT account settings and negative test results are “more in 19 the nature of fact work product than opinion work product” because they are “more in the nature 20 of bare facts.” ECF 154 at 5-6. This is a misapplication of law as the ChatGPT prompts were 21 queries crafted by counsel and contain counsel’s mental impressions and opinions about how to 22 interrogate ChatGPT, in an effort to vindicate Plaintiffs’ copyrights against the alleged 23 infringements. See Mackay, 742 F.3d at 869 n.3. 24 Plaintiffs also take issue with the Order’s broad finding of waiver as contrary to law. 25 While the central purpose of the work-product doctrine is to “prevent exploitation of a party’s 26 efforts in preparing for litigation,” it is a “qualified” privilege that can be waived by a litigant by 27 “reveal[ing] or plac[ing] the work product at issue during the course of litigation.” United States 1 between a waiver of factual work product and a waiver of opinion work product.” Munguia- 2 Brown v. Equity Residential, 337 F.R.D. 509, 516 (N.D. Cal. 2021). Waiver of fact work product 3 extends to the subject matter of the disclosed work product. See Hernandez v. Tanninen, 604 F.3d 4 1095, 1100 (9th Cir. 2010) (concluding that disclosure of attorney notes constituted a waiver over 5 the subject matter of the disclosed notes). The scope of any waiver “must be closely tailored . . . 6 to the needs of the opposing party” and courts must “be careful to impose a waiver no broader than 7 needed to ensure the fairness of the proceedings before it.” Sanmina, 968 F.3d at 1122, 1124. 8 However, opinion work product is discoverable by waiver only where “mental impressions are at 9 issue in a case and the need for the material is compelling.” Id. at 1124-25 (quoting Holmgren v. 10 State Farm Mut. Auto. Ins. Co., 976 F.2d 573, 577 (9th Cir. 1992)); see In re Cathode Ray Tube 11 Antitrust Litig., No. 07-CV-05944-JST, 2023 WL 5667880, at *5 (N.D. Cal. July 6, 2023). 12 Because the Order determined that the prompts and outputs were fact work product, the 13 Order concluded that broad subject matter waiver applied, and that Plaintiffs had waived the 14 privilege as to all account settings, prompts, and outputs for Plaintiffs’ testing of ChatGPT. ECF 15 154 at 6.1 While a narrow subject matter waiver would apply to fact work product revealed by 16 counsel, applying subject matter waiver here is inapposite to Ninth Circuit law related to waiver of 17 opinion work product. 18 The Order did not conclude – nor did Defendants show – that counsel’s mental 19 impressions are at issue here or that Defendants have a compelling need for the material. See 20 Sanmina, 968 F.3d at 1125; see also Upjohn Co. v. United States, 449 U.S. 383, 401 (1981) 21 (“[S]uch work product cannot be disclosed simply on a showing of substantial need and inability 22 to obtain the equivalent without undue hardship.”). Indeed, without further support, Defendants 23 state that the information is necessary to test Plaintiffs’ allegations, ECF 153 at 3, and the Order 24 finds that the negative test results and account settings “appear[] likely to aid in Defendants’ 25 understanding of Plaintiff’s positive results . . . .” ECF 154 at 6. Thus, it was improper to extend 26 1 The Order also stated that subject matter waiver would apply even if the work product at issue 27 here were opinion work product, ECF 154 at 6, however that misstates the law. See Sanmina, 968 1 the scope of the waiver to opinion work product not disclosed in the operative complaint. 2 ||} IV. CONCLUSION 3 For the foregoing reasons, the Court GRANTS Plaintiffs’ motion for relief. The Court 4 || DENIES Defendants’ request to compel production of all negative testing results and the 5 documentation of the testing process. To the extent they have not already, Plaintiffs shall disclose 6 || the prompts, outputs, and account settings used for the inputs for the positive testing results 7 referred to and disclosed in the FCAC. 8 9 IT IS SO ORDERED. 10 Dated: August 8, 2024 11 Weck f/ □
12 coh ARACELI MARTINEZ-OLGUIN 13 United States District Judge © 15 16
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