*1 On March 24, 2023, Plaintiff filed a Motion (ECF 86) seeking the following: (1) a protective order preventing Plaintiff from having to travel from Jacksonville, Florida, to Los Angeles, California, for her deposition; (2) to compel Defendants Zoetop Business Co., Ltd. and Shein Distribution Corporation (collectively “Defendants”) to produce documents responsive to Plaintiff's request for production of documents (“RFP”) numbers 47-49 and 65; and (3) to compel Defendants to make Yuki Wang available for video deposition in China. (Mot. at 2). Plaintiff also submitted a Memorandum of Points and Authorities (“MPA”) in support of the Motion, the declaration of Plaintiff (“Pl.'s Decl.”), and the declaration of her counsel Ji Mao (“Mao Decl.”), along with exhibits. On April 10, 2023, Defendants filed their Opposition to the Motion (ECF No. 87), along with the Declaration of their counsel Justin A. MacLean (“MacLean Decl.”) and exhibits, and the Declaration of Tim Wei (“Wei Decl.”), in-house counsel for Zoetop Business Co., Ltd. during the relevant time period. On April 17, 2023, Plaintiff filed her Reply (ECF No. 88).

Having considered the pleadings submitted in connection with the Motion, the Court has concluded that oral argument will not be of material assistance in determining the Motion. Accordingly, the hearing scheduled for May 1, 2023, is ordered off calendar. See Local Rule 7-15.

Background

Plaintiff is an independent artist and illustrator who sells original designs in the form of art prints and other products. (MPA 2). She created the design “One is good, more is better” (the “Design”), and alleges that Defendants “advertised, marketed, and sold the original, copyright-protected elements of the [Design] without Plaintiff's authorization on Defendants' websites using the description ‘Abstract Pattern Wall Painting Without Frame' (the ‘Accused Product’).” (MPA 2). She asserts claims against Defendants stemming from their sale of her copyrighted artwork without her permission. (MPA 2).

On September 27, 2022, the District Judge entered a Scheduling Order establishing a discovery cut-off date of May 15, 2023. (MPA 2; ECF 31). On December 16, 2022, Defendants filed a motion for partial summary judgment on Plaintiff's third and fourth claims, which were brought under the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. §§ 1202(a) and 1202(b), arguing that they did not know that Plaintiff's copyright management information[1] (“CMI”) had been improperly removed from the Accused Product because they had obtained it from a vendor who represented there were no copyright issues. (MPA 2; ECF 46). Plaintiff argued that she needed additional time to conduct discovery because Defendants had not yet made Ms. Wang available for deposition, and had not yet produced documents in response to Plaintiff's RFPs. (MPA 2-3; ECF 69). On February 10, 2023, the District Judge denied Defendants' motion for partial summary judgment with respect to Plaintiff's § 1202(b) claim and noted that “additional time ... exists before the [May 15, 2023,] discovery cutoff date,” to obtain documents in response to the RFPs. (MPA 3; ECF 81 at 12). Specifically, the Order stated the following:

(ECF 81 at 6-7)

Motion for Protective Order

Plaintiff moved for a protective order regarding the location of her deposition, arguing that good cause existed to hold the deposition in her hometown of Jacksonville, Florida, rather than in the noticed location of Los Angeles, California. In their Opposition, Defendants note that they have agreed to taking the deposition in Florida. (Opp'n 1 n.1).

Accordingly, Plaintiff's Motion for a protective order regarding the location of her deposition is denied as moot.

Deposition of Yuki Wang

Plaintiff moved to compel Defendants to make Yuki Wang available for deposition, alleging that “she is a managing agent of Defendants and is thus subject to deposition by notice.” (MPA 2). In her Reply, Plaintiff states that -- based on the new facts presented by Defendants in their Opposition -- she is no longer seeking Ms. Wang's deposition. (Reply 5). She requests an order from this Court admonishing Defendants “to not ‘hide the ball' on discovery issues, only to provide them after Plaintiff files a motion to compel.” (Reply 5).

Based on the foregoing, Plaintiff's Motion to compel the deposition of Ms. Wang by notice, is denied as moot.

RFPs 47-49 and 65

Federal Rule of Civil Procedure 26 (“Rule 26”) provides that a party may obtain discovery “regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case[.]” Fed. R. Civ. P. 26(b)(1). Factors to consider include “the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.” Id.

Plaintiff states that she opposed Defendants' early summary judgment motion “specifically on the basis that she still needed to discover” the documents requested by the subject RFPs. (MPA 1). She asserts that the District Judge agreed to permit her to conduct discovery, and acknowledged that Plaintiff's efforts to seek this discovery may result in a motion to compel. (MPA 1-2). According to Plaintiff, the District Judge rejected Defendants' arguments that the requested documents were not relevant to Plaintiff's third claim[2] pursuant to § 1202(b) and allowed Plaintiff “until the end of the discovery period to collect additional evidence.” (MPA 4-5 (citing ECF 81 at 6-7, 12)).

Following the District Judge's ruling, the parties again met and conferred regarding the subject discovery, but Defendants have continued to refuse to produce the requested documents. (MPA 2, 5). Plaintiff contends the documents “are plainly relevant to proving Defendants' liability [under Plaintiff's § 1202(b) claim], including willfulness, and the [amount and types of] relief to be awarded to Plaintiff.” (MPA 2, 10).

*3 Specifically, Plaintiff notes that the subject RFPs seek documents sufficient to show the following:

(MPA 4 (citing Mao Decl. Ex. F)). Plaintiff contends that Defendants responded to the RFPs “with boilerplate objections and stated they were ‘withholding documents.’ ”[3] (MPA 4 (citing Mao Decl. Exs. E & G)).

Plaintiff argues that the documents being sought are highly relevant to this action because they pertain to Defendants’ “history of alleged copyright infringements” and are thus relevant and necessary to adjudicate Defendants' liability under Plaintiff's § 1202(b) claim and, if Plaintiff prevails on that claim, to determine the amount and types of relief to be awarded. (MPA 9-10). Plaintiff explains that § 1202(b) “contains a double-scienter requirement -- actual knowledge of the removal or alteration of CMI without authority and actual or constructive knowledge that such distribution will induce, enable, facilitate, or conceal an infringement.” (MPA 1 (citation omitted)). She asserts that with respect to the actual knowledge requirement, “the willful blindness doctrine may be applied, in appropriate circumstances, to demonstrate knowledge or awareness of specific instances of infringement under the DMCA.” (MPA 10 (citing Lenz v. Universal Music Corp., 815 F.3d 1145, 1155-56 (9th Cir. 2016))). She notes that to show willful blindness, she must show that “(1) [Defendants] subjectively believed that there was a high probability that Plaintiff's signature (the alleged ‘CMI’) existed on and was removed from the Good at Issue, and (2) took deliberate actions (as opposed to passive inaction) to avoid learning of that alleged removal.” (MPA 10 (citation omitted)).

Plaintiff argues that the requested documents “are relevant to at least the second element of willful blindness [requiring a showing that Defendants took deliberate actions to avoid learning of the alleged removal of CMI] because Courts have found that a party's past history of bad acts is relevant to whether that party took willful, i.e., deliberate action.” (MPA 11 (citing Gucci Am., Inc. v. Guess?, Inc., 858 F. Supp. 2d 250, 253 (S.D.N.Y. 2012), John Wiley & Sons, Inc. v. Book Dog Books, LLC, 327 F. Supp. 3d 606, 628 (S.D.N.Y. 2018))). She further contends that Defendants put the requested documents “squarely at issue by arguing during their summary judgment briefing that Plaintiff does not have enough evidence of Defendants' systemic infringement because ‘Plaintiff only proffers two declarations involving a handful of alleged infringements,’ while ‘thousands of new products are added to [Defendants’] US Websites every day.’ ” (MPA 11 (quoting ECF 67 at 4) (footnote omitted)).

*4 Finally, Plaintiff contends that the requested documents are relevant and necessary to determine the amount of damages and other relief to be awarded under all of Plaintiff's claims “because they establish Defendants' history of flagrant disregard for the copyright laws.” (MPA 12). She explains that under 17 U.S.C. § 1203, at any time before final judgment is entered, a complaining party may elect to recover an award of statutory damages for each violation of § 1202 in the sum of not less than $2,500 or more than $25,000, and discovery on past infringement is necessary to determine whether statutory damages should fall within that range. (MPA 12 (citation omitted)). Additionally, the discovery relating to Defendants' history of infringement is necessary because § 1203(c)(4) provides that if the injured party sustains its burden of proving, and the court finds that a person or entity has violated § 1201 or 1202 within 3 years after a final judgment was entered against it for another such violation, the court may increase the award of damages up to triple the amount that would otherwise be awarded. (MPA 12-13; but see supra n.3). Because Defendants recently provided a supplemental response to RFP number 48, asserting that no Court has found Defendants liable for DMCA violations since January 1, 2020, Plaintiff appears to acknowledge in her Reply that Defendants' supplemental response to RFP number 48 renders her argument regarding the relevancy of these documents to the availability of treble damages moot. (Reply 4 n.5). She also alleges, however, that such discovery is necessary to determine whether non-monetary relief is appropriate. (MPA 13 (citations omitted)).

With respect to RFP numbers 47, 49, and 65, Defendants assert that Plaintiff's arguments -- that the documents are “necessary” to determine Defendants' alleged liability for violating the DMCA, and to award statutory damages or other relief for such an alleged violation -- fail. (Opp'n 2). Defendants also point out that Plaintiff seeks “ ‘monetary damages in excess of $100,000,000' based on an allegedly infringing product ... that netted less than $9,000 in total United States revenue” to the Defendants. (Opp'n 1).

Specifically, Defendants note that Plaintiff is seeking documents identifying all allegations of copyright infringement and violation of the DMCA “asserted against Defendants in the past nine years involving unrelated third parties, unrelated alleged copyrights, and unrelated products in other geographic regions -- claiming that such documents might show that Defendants were ‘willfully blind' to the alleged removal of [CMI] from Plaintiff's single, U.S. copyrighted design.” (Opp'n 1). With respect to RFP 47, they argue that documents relating to “[u]nsubstantiated, unadjudicated claims by third parties cannot possibly bear on this inquiry.” (Opp'n 1). Defendants state that copyright infringement is a strict liability tort and, therefore, their state of mind is completely irrelevant to that claim. (Opp'n 3). They also contend that Plaintiff's claim for copyright infringement fails because Plaintiff did not timely register her marks. (Opp'n 3). Because of that, Defendants claim that Plaintiff “does not (and cannot) seek statutory damages at all -- much less enhanced statutory damages” for that claim. (Opp'n 3).

With respect to Plaintiff's request for documents relating to § 1202(b) claims or allegations (RFP number 49), Defendants contend that “to be willfully blind, a defendant's conduct must ‘surpass[ ] recklessness and negligence.’ ” (Opp'n 4). They note that Plaintiff acknowledged that the willful blindness doctrine may be applied, “in appropriate circumstances, to demonstrate knowledge or awareness of specific instances of infringement under the DMCA.” (Opp'n 4 (internal quotation marks omitted)). Defendant submits that “the law is clear that only knowledge related to the specific good at issue is relevant to willful blindness; the general awareness of potential infringement on a defendant's platform is not.” (Opp'n 4 (citing Capitol Records, LLC v. Vimeo, LLC, 826 F.3d 78, 99 (2d Cir. 2016) for the proposition that “knowledge under the DMCA ordinarily must relate to ‘specific infringing material’ and ‘because willful blindness is a proxy for knowledge, it too must relate to specific infringements.’ ”) (internal quotation marks omitted)). They assert that another copyright owner's complaints about Defendants' infringement of its works, does not show willful blindness as to the removal of Plaintiff's CMI from the Accused Product. (Opp'n 4-5 (citing Harrington v. Pinterest, Inc., 2021 WL 4033031, at *3 (N.D. Cal. Sept. 3, 2021), Capitol Records, LLC v. Vimeo, LLC, 972 F. Supp. 2d 500, 524-25 (S.D.N.Y. 2013))). And, even if documents were produced showing multiple third-party allegations of infringement or CMI removal, at most this would show that “Defendants were indifferent to such activities,” not that they were willfully blind with respect to the alleged CMI removal from Plaintiff's Design in this case. (Opp'n 5). Defendants conclude, therefore, that the information being sought by Plaintiff is irrelevant to the issue of willful blindness under the DCMA. (Opp'n 5).

*5 Defendants also acknowledge, however, that they received by email or other communication methods, “[a] number of alleged copyright [infringement and/or DMCA] claims ... [that] did not have any merit, and once [Defendants] responded to those claims, advising why the claim was not meritorious, those claimants did not further pursue their claims.” (Wei Decl. ¶ 15). At “[o]ther times, such meritless claims were settled for business or other reasons, and those settlements include no admission of liability and confidentiality provisions.” (Wei Decl. ¶ 15).

Defendants argue that the cases relied on by Plaintiff to demonstrate that the requested documents are relevant to Defendants' prior bad acts so that Plaintiff can prove that Defendants took deliberate actions to avoid learning of the alleged removal of CMI from Plaintiff's Design are unavailing. (Opp'n 6). They note that Gucci Am. is a trademark infringement case that does not address willful blindness under the DMCA or generally. (Opp'n 6). And, in John Wiley & Sons, “the court admitted evidence of a prior agreement between the same parties to establish willfulness for trademark and copyright infringement,” again with no mention of “willful blindness, the DMCA, or third-party claims.” (Opp'n 6). Defendants argue that the third-party documents requested here fail to demonstrate willful blindness in this case, which is necessary for Plaintiff to prove her claim under § 1202(b). (Opp'n 7-8). Additionally, Defendants argue that “ ‘willful’ trademark and copyright infringement” claims -- the claims at issue in Gucci Am. and John Wiley & Sons -- “can be shown by reckless disregard,” while a claim for CMI removal under § 1202(b) requires a showing of willful blindness, which cannot be met by recklessness. (Opp'n 6 (citations omitted)).

Defendants also argue that in light of their minimal revenues from the Accused Product, the burden in searching for the requested documents “would be vastly disproportional to the needs of this case” as they “would have to manually search tens of thousands of documents to locate those relating to copyright and/or DMCA claims, and filter out thousands of pages of irrelevant, privileged, and/or confidential material.” (Opp'n 1-2).

With respect to Plaintiff's argument that the documents are relevant to statutory damages, Defendants argue that Plaintiff fails to explain how third-party claims of infringement are relevant to that determination. (Opp'n 7 (citations omitted)). They reiterate that Plaintiff's claim for treble damages “misses the mark” as Defendants “have had no judgment entered against them for violation of § 1201 or 1202 at any time before Plaintiff alerted Defendants of her alleged claims in August 2021, and Defendants removed the [Accused Product] from their websites promptly thereafter.” (Opp'n 8). They also contend that any request for injunctive relief would be moot, because they “already ceased sale of the [Accused Product] in August 2021.” (Opp'n 8).

Plaintiff replies that she is not required to accept, and is entitled to test, Defendants “bald assertion that they received no prior allegations of removal of CMI by the supplier at issue, as requested by RFP number 48.”[4] (Reply 1 (emphasis added)). She notes that Defendants testified at deposition that they do not keep records that would allow them to keep track of accusations of CMI removal, and that they “lied to artists, telling them that Defendants have terminated suppliers for providing infringing products, when Defendants admitted at deposition that no suppliers have ever been terminated.” (Reply 1 (comparing Compl. ¶ 30, with ECF 82-4 Ex. N at 111-12)). She argues that she needs the requested documents to determine the extent to which prior allegations “are tied to the supplier at issue and/or its affiliates.” (Reply 1 (emphasis added)).

*6 Plaintiff states that the cases she relied on --Gucci Am. and John Wiley & Sons --do not “in any way suggest that a defendant's history of infringement is relevant only to the determination of recklessness, to the exclusion of knowledge or willful blindness.” (Reply 1). She asserts that a defendant's history of infringement is relevant to the issue of whether it had knowledge that CMI had been removed. (Reply 2). She also notes that § 404(b)(2) of the Federal Rules of Evidence provides that evidence of prior bad acts may be admissible to show motive, opportunity, intent, preparation, plan, knowledge, identity, absence of mistake, or lack of accident. (Reply 3).

Plaintiff also reasserts that the subject documents are relevant to her damages. (Reply 4). She states the following: courts consider deterrence as a factor in determining damages, and may award higher damages to deter future conduct; although Defendants argue that the requested documents are not relevant to determining nonmonetary relief under the DCMA, it is relevant to determining relief under her copyright infringement claims; and, an action for injunctive relief does not become moot simply because the offending conduct was terminated. (Reply 4).

Plaintiff also takes issue with Defendants' argument that the burden of producing the requested documents would be disproportionate to the needs of the case in light of Defendants' repeated contention that they could be liable for up to $100,000,000 in statutory damages. (Reply 4-5). She submits that given Defendants' “admission of the high value of this case, any burden of producing these relevant documents is proportional.” (Reply 5).

Analysis

The Court determines that Plaintiff's RFPs as written are overbroad as to time and scope as they seek documents not relevant to the parties' claims and defenses and proportional to the needs of the case. Whether other parties --for the past 9 years --have (1) alleged copyright infringement against Defendants (RFP number 47), (2) made allegations under 17 U.S.C. § 1202(b) (RFP number 49), and/or (3) since 2018 have notified Defendants about or complained of copyright infringement or removal of copyright information via “WeChat messages” or any similar messaging applications (RFP number 65), is little more than a burdensome fishing expedition. On the other hand, as generally acknowledged by Defendants, it is unsubstantiated, unadjudicated claims by third parties that do not “bear on this inquiry.” Additionally, as alluded to by Plaintiff, responsive documents that are tied to the supplier at issue and/or its affiliates, are also relevant to the parties' claims and defenses and proportional to the needs of the case. The Court therefore finds with respect to RFP numbers 47 and 49, that (1) lawsuits, judgments, and/or settlements[5] relating to copyright infringement and/or violation of § 1202(b), and (2) involving the same vendor that allegedly removed Plaintiff's CMI, are relevant to the parties' claims and defenses in this action, and proportional to the needs of the case. The Court also finds it reasonable to limit the search to such documents to the five years prior to the infringement alleged herein, i.e., from August 2016 to August 2021.

*7 Additionally, the Court finds that communications from April 1, 2018, to August 30, 2021, received by Defendant(s) via WeChat or other messaging or email platform, and notifying them of copyright infringement and/or removal of CMI by the same vendor alleged to have removed Plaintiff's CMI in this action (RFP No. 65), is also relevant to the parties' claims and defenses in this action, and proportional to the needs of this case. The Court understands that locating any such communications might involve the search of multiple platforms or the inboxes of multiple custodians or servers, but determines that the type and number of search terms required for this endeavor is narrow. For example, identity of the vendor, and likely the primary contacts at that vendor, might alone suffice so that the number of “hits” would be relatively low.

The Court does find it somewhat distasteful that Defendants waited until the issues in this case were briefed by Plaintiff to provide certain discovery and answers to questions that should have been provided during the meet and confer process. Defendants are admonished that any further delays or “hiding the ball” will not be tolerated.

Order

Based on the foregoing, Plaintiff's Motion (ECF 86) is granted in part and denied in part. No later than May 15, 2023, Defendants are ordered to produce the following: (1) documents sufficient to identify lawsuits, judgments, and/or settlements relating to one or both Defendants from January 1, 2016, to the present, alleging copyright infringement and involving the same vendor alleged to have removed Plaintiff's CMI in this action (RFP 47); (2) documents sufficient to identify lawsuits, judgments, or settlements relating to one or both Defendants from January 1, 2016, to the present, alleging violation of 17 U.S.C. § 1202(b) and involving the same vendor alleged to have removed Plaintiff's CMI in this action (RFP 49); and (3) communications received by Defendant(s) via WeChat or other messaging or email platform, from April 1, 2018, to the present, notifying Defendant(s) of alleged copyright infringement and/or removal of CMI by the same vendor alleged to have removed Plaintiff's CMI in this action (RFP 65).

If Defendants contend that no documents exist for any given RFP, Defendants shall provide Plaintiff a declaration, signed under penalty of perjury by a corporate representative, detailing the steps taken to search for responsive documents, and attesting, if true, that no such documents exist.

In light of Defendants' representations that they have conducted a diligent search and reasonable inquiry with respect to the documents sought by RFP number 48 (seeking documents sufficient to identify all judgments against one or both Defendants since January 1, 2020, in which Defendant(s) were found liable for violation of 17 U.S.C. § 1202(b)), and that no such documents exist, Plaintiff's Motion to compel Defendants to produce documents in response to RFP number 48 is denied.

IT IS SO ORDERED.