*1 On November 8, 2023, Pandora Media, LLC (“Pandora”) filed a Motion to Compel on 800 Pound Gorilla, LLC (“Gorilla”) to comply with a subpoena in the District Court of Delaware. In Re: Pandora Media, LLC, Case No. 2:23-mc-169-MCS-MAR (“No. 169”), ECF Docket No. (“Dkt.”) 1. The subpoena was served on April 28, 2023, and sought discovery for Yellow Rose Productions, Inc. v. Pandora Media, LLC, No. 2:22-cv-809-MCS-MAR (“No. 809”), a case pending in this district. No. 169, Dkt. 2 at 5. On November 21, 2023, the motion was transferred to the Central District of California upon the parties' stipulation. No. 169, Dkts. 7, 8.
The Court finds this matter suitable for resolution without oral argument. See Fed. R. Civ. P. 78(b); Local Rule 7-15. For the reasons set forth below, the Motion is DENIED in part and GRANTED in part.
I.
BACKGROUND:
On February 7, 2022, Yellow Rose Productions, Inc. filed an action against Pandora. No. 809, Dkt. 1. On March 22, 2022, the district court ordered this case to be consolidated for pretrial purposes with nine (9) other cases brought against Pandora by individual comedians, their production companies, or their estates (collectively “Plaintiffs”). No. 809, Dkt. 18.
Plaintiffs bring their consolidated copyright infringement action against Pandora, a digital broadcast radio and interactive streaming service. No. 809, Dkt. 178 at 9. Plaintiffs argue that the use of comedic recordings implicate two (2) distinct copyrights—one for the sound recording of the comedy routine and one for the underlying jokes embodied in the spoken-word comedy recordings. Id. at 29. Plaintiffs allege that Pandora failed to obtain a license or pay royalties on the underlying literary works. Id. at 9–10.
Pandora denies that it has infringed Plaintiffs' literary copyrights. Id. at 4. Pandora raises various affirmative defenses, including implied license and misuse of copyright. Id. at 10. With respect to its implied license defense, Pandora claims that—per decades-long industry custom—no compositional licenses are necessary, as no royalties have ever been paid to license comedians' underlying compositions. Id. Pandora argues, in the alternative, that they have received an implied license to use the works. Id.
Pandora brought antitrust counterclaims against the comedians, as well as Spoken Giants, LLC (“Spoken Giants”) and Word Collections, LLC (“Word Collections”), licensing groups that represent the comedians. No. 809, Dkts. 34, 72. On July 15, 2022, Plaintiffs and counter-defendants Spoken Giants and Word Collections filed a motion to dismiss Pandora's counterclaims. No. 809, Dkt. 49. On October 26, 2022, the district court dismissed the counterclaims without prejudice. No. 809, Dkt. 83. On November 18, 2022, Pandora brought amended counterclaims against the comedians, Spoken Giants, and Word Collections. No. 809, Dkts. 93, 94. On April 5, 2023, the district court dismissed all of Pandora's counterclaims with prejudice; accordingly, Spoken Giants and Word Collections were terminated as parties to the action. No. 809, Dkt. 164.
*2 Gorilla was founded in 2016 and is a record label that produces comedy recordings. No. 169, Dkt. 2 at 5. Gorilla has produced comedy albums for Lewis Black and George Lopez, both of whom are Plaintiffs in the Consolidated Litigation. Id. Additionally, Pandora alleges, and Gorilla does not dispute, that the founders of Gorilla are also the founders of Spoken Giants, mentioned above. Id.
On April 28, 2023, Pandora, propounded twenty-two (22) discovery requests on Gorilla as a nonparty, pursuant to Federal Rule of Civil Procedure 45. No. 169, Dkts. 2 at 5; 3-1 at 14–17.
Fed. R. Civ. P. 26(b)(2)(C). “Thus, a court determining the propriety of a subpoena balances the relevance of the discovery sought, the requesting party's need, and the potential hardship to the party subject to the subpoena.” Heat & Control, Inc. v. Hester Industries, Inc., 785 F.2d 1017, 1024 (Fed. Cir. 1986).
However, while discovery should not be unnecessarily restricted, nonparty discovery is more limited to protect nonparties from harassment, inconvenience, or disclosure of confidential documents. Dart Indus. Co. v. Westwood Chem. Co., 649 F.2d 646, 649 (9th Cir. 1980). Accordingly, “concern for the unwanted burden thrust upon nonparties is a factor entitled to special weight in evaluating the balance of competing needs.” Cusumano v. Microsoft Corp., 162 F.3d 708, 717 (1st Cir. 1998). However, “third party discovery is a time-honored device to get at the truth of a claim or defense. A party in litigation is not obligated to take the word of an opponent regarding what relevant documents do or do not exist.” L.G. Philips LCD Co. v. Tatung Co., No. C 07 80073WHA, 2007 WL 869256, at *2 (N.D. Cal. March 20, 2007).
1. Relevance to custom and practice
Pandora asserts the defense of industry custom and practice, whereby they argue that Spoken Giants and Word Collections seek, through Plaintiffs, to overturn the traditional custom and practice of comedy works royalties. No. 169, Dkt. 2 at 14. They argue that Gorilla, as one of the largest comedy record labels, will have relevant discovery about the custom and practice of the comedy industry. Id.
The Court notes that “[n]on-parties have a different set of expectations. Accordingly, concern for the unwanted burden thrust upon nonparties is a factor entitled to special weight in evaluating the balance of competing needs.” Monster Energy Co. v. Vital Pharm., Inc., No. 5:18-cv-01882-JGB (SHKx), 2020 WL 2405295, at *6 (C.D. Cal. Mar. 10, 2020) (quoting Cusumano, 162 F.3d at 717 (citing, inter alia, Dart Indus. Co., 649 F.2d at 649; In re Pioneer Corp., No. CV 18-4524 JAK (SSx), 2019 WL 5401015, at *5 (C.D. Cal. Jan. 9, 2019) (quoting Cusumano))). Additionally, Rule 45(d)(3)(B) allows a court to strike a request where the information would disclose “confidential research, development, or commercial information” or an “unretained expert's opinion or information that does not describe specific occurrences in dispute and results from the expert's study that was not requested by a party.” Id.
In the Court's previous order regarding similar requests propounded on Spoken Giants, the Court reasoned that, because Spoken Giants was founded in 2019, any information on the industry custom and practice would necessarily be from their own independent research and not their participation in the industry. Case No. 2:23-mc-149-MCS-MAR (“No. 149”), Dkt. 36 at 6. Notably, Pandora claims, and Gorilla does not dispute, that the founders of Gorilla launched Spoken Giants. No. 169, Dkt. 2 at 5. However, ultimately, neither this fact nor the Court's previous ruling have a significant effect on the analysis here. While the Court found that Spoken Giants would not have responsive information as a participant in the comedy industry, this is not the case for Gorilla. Gorilla has been in the comedy business since 2016. No. 169, Dkt. 2 at 20. It follows that they will likely have information about the comedy industry custom and practice as participants in the industry—not solely through independent research, like Spoken Giants.
*4 However, the Court finds the requests are overbroad as written and seek some private commercial information that is not relevant to the claims or defenses here. Therefore, as detailed below, the Court narrows the requests to limit the scope of discovery to royalties, licensing, streaming, and comedy works rights.
Pandora justifies the breadth of their requests by citing the facts that Spoken Giants and Word Collections were formally parties in this action and Gorilla has a relationship with them. See No. 169, Dkt. 2 at 16–17. However, Pandora neglects to meaningfully discuss how Spoken Giants and Word Collections were only parties because Pandora brought them in as counter-defendants; indeed, the counterclaims have since been dismissed not once, but twice by the district court. No. 809, Dkts. 83, 164. As noted above, after Pandora was given an opportunity to amend, the counterclaims against Spoken Giants and Word Collections were dismissed with prejudice and they were terminated as parties in this action. See No. 809, Dkt. 83.
Ultimately, the procedural history of this case reveals that, despite Pandora's own efforts to join Spoken Giants and Word Collections in this action, the district court has expressly and finally determined that they should not be joined. Id. In its previous order, the Court cited this procedural history to explain that it was not persuaded by Pandora's argument that Spoken Giants and Word Collections should not be afforded the protection of nonparties in discovery. No. 149, Dkt. 36 at 4. The argument is even more attenuated with respect to Gorilla, given that Gorilla was never a party to the action. Accordingly, the Court is similarly unpersuaded that Gorilla should be afforded less consideration as a nonparty. Therefore, here the Court considers, as is typical in subpoenas served on nonparties, that “the standards for nonparty discovery ... require a stronger showing of relevance than for simple party discovery.” Laxalt v. McClatchy, 116 F.R.D. 455, 458 (D. Nev. 1986).
Here, many of Pandora's requests have no connection to the Plaintiffs in this action. See No. 169, Dkt. 13–14. Pandora relies on M. Witmark & Sons v. Jensen, 80 F. Supp. 843 (D. Minn. 1948) to argue that the act of banding together to form blanket licensing collectives can support the defense of copyright misuse. However, M. Whitmark & Sons is distinguishable from this case. In M. Witmark & Sons, the collective was found to control 80% of the market, and based on that percentage, the court found the collective liable for violating antitrust laws. Id. at 847–50. Thus, the copyright misuse in M. Witmark & Sons was directly tied to an antitrust violation. By contrast, here the district court found that Pandora's claims lacked specificity, and that even with a “hypothetical total,” Spoken Giants and Word Collections's combined market share was only 28%—well below the threshold of 65% market share courts generally use “for finding a prima facie case of monopoly power.” No. 809, Dkt. 164 at 22–23 (quoting Epic Games, Inc. v. Apple Inc., 559 F. Supp. 3d 898, 1029 (N.D. Cal. 2021)); accord Image Tech. Servs., Inc. v. Eastman Kodak Co., 125 F.3d 1195, 1206 (9th Cir. 1997) (“Courts generally require a 65% market share to establish a prima facie case of market power.”). The district court dismissed the antitrust claims on this basis. Id. at 28. Pandora has cited no authority that would support the proposition that, absent a potential antitrust violation, the mere existence of Spoken Giants and Word Collections as collectives would automatically make their actions relevant to this case—let alone the actions of a disinterested nonparty that merely has some connection to the collectives. This is particularly true where Spoken Giants and Word Collections have expressly and finally been terminated as a party to the action.
*5 To be sure, the district court did note that “discovery may yield information about the nature of the agreements between the comedians and [counter-defendants], at the very least in the context of Pandora's copyright misuse defense.” No. 809, Dkt. 83 at 27. Thus, the district court left open the possibility that communication between Spoken Giants or Word Collections and Plaintiffs may be relevant. However, as mentioned many times, Gorilla has never been a party to the action, and their connection to the parties is more attenuated. Ultimately, the Court finds that Pandora has failed to show that general communications between Spoken Giants or Word Collections and Gorilla—other than those specifically related to Plaintiffs in this action—are likely to be relevant to the defenses in this action.
Additionally, Gorilla notes that Pandora's defenses of misuse and unclean hands are solely based on the Plaintiffs' knowledge and actions, not their own as a nonparty; Gorilla argues that this distinction should be reflected in the breadth of Pandora's requests. No. 169, Dkt. 28 at 20. This Court agrees.
Notably, there is no dispute that Gorilla communicated to at least two Plaintiffs. Id. at 7. This communication may be relevant to what knowledge Plaintiffs may have had or acted upon. Thus, the Court finds that any communications to Plaintiffs pertaining to the copyright claims at issue here are discoverable. By contrast, all the discovery requests solely seeking information on Gorilla's business model, investors, catalogue, research, or communications with other entities (i.e. Spoken Giants and Word Collections) that do not implicate Plaintiffs, Comedy Works Rights, or streaming comedy works are not relevant to the claims or defenses at issue here.
As to the requests that are purportedly relevant to damages, Pandora asserts, “[t]hese Requests all call for documents that relate to royalties for the comedy routines embodied in comedy recordings—the rights the Plaintiffs contend were infringed in the Consolidated Litigation.” No. 169, Dkt. 2 at 17.
Pandora argues that courts routinely conclude that documents that go to damages are relevant in copyright infringement cases. Id. at 13–14. However, Pandora only cites to cases dealing with requests propounded on a party to the action. Id. at 13–15. Here, Gorilla is a nonparty; Pandora provides no case law that supports the premise that a nonparty's financial data would be relevant to a plaintiff's claim for damages in a copyright infringement case.
Indeed, Micro Motion, Inc. v. Kane Steel Co., 894 F.2d 1318, 1325 (Fed. Cir. 1990), is instructive here. There, the Federal Circuit found that the plaintiff was not entitled to discovery on financial data, sales, and client lists from a nonparty competitor solely because the complaint asked for damages. Id. In Micro Motion, Inc., it was the plaintiff seeking discovery on the financial information; an alleged infringer like Pandora arguably would have even less standing to seek a nonparty's financial information based on the Plaintiff's claims for damages. In any case, the court in Micro Motion, Inc. noted that, should the discovery be allowed, “of course, the alleged infringer in such case would have the same right.” Id. Accordingly, the court appeared to contemplate and intend that alleged infringers would be entitled to the same discovery as the plaintiff, and, presumably, subject to the same limitations.
Notably here, Gorilla claims, and Pandora does not dispute, that the only Plaintiffs connected to Gorilla are Lewis Black and George Lopez, and all responsive documents regarding them “that could potentially be relevant to the underlying litigation” have been produced. No. 169, Dkt. 28 at 6. As only two (2) of the Plaintiffs are affiliated with Gorilla, no information concerning the other Plaintiffs' damages could be directly discerned from Gorilla's private business information. It is thus unclear how else Pandora's broad sweeping requests for Gorilla's past or future agreements, affiliations, or contracts and drafts of such with other entities would be relevant to the Plaintiffs' damages or the asserted works at issue in this litigation. Accordingly, Pandora is not entitled to this discovery on Gorilla's financial information.
C. MODIFIED REQUESTS FOR PRODUCTION
*6 Typically, it is not the Court's job to rewrite overbroad discovery requests. See Finkelstein v. Guardian Life Ins. Co. of Am., No. C07-1130CRB(BZ), 2008 WL 2095786, at *2 (N.D. Cal. May 14, 2008) (“Rule 26 does not require the Court to rewrite discovery requests for the parties.”); Kilby v. CVS Pharmacy, Inc., No. 09-cv-2051, 2017 WL 1424322, at *4 n.3 (S.D. Cal. Apr. 19, 2017) (“Particularly when a party stands on an overly broad request and does not make a reasonable attempt to narrow it or to explain the need for such a broad range of documents and/or information, the Court will not rewrite a party's discovery request to obtain the optimum result for that party. That is counsel's job.”) (internal citations and quotation marks omitted). However, in the interest of preventing future motion practice in what has already been a fraught discovery period, the Court will modify certain requests.
Notably, while the Court has previously limited the scope of discovery requests in this case to include only documents within the relevant timeframe—from February 7, 2019 (three years prior to the filing of the first Complaint in this action) to the present—here, the Court departs from this limitation. See Dkt. 193 at 5. Gorilla has only been an entity since 2016, and its owners created Spoken Giants in 2019; it is therefore reasonable to conclude that they may have documents based on industry practice and custom that are relevant to the claims prior to 2019. See id. Furthermore, the Court finds that, in considering the Court's other modifications of the requests, the addition of three (3) years to the scope of discovery is not overly burdensome to Gorilla. Thus, for the reasons discussed above, the Court amends the requests as follows:
All agreements with Plaintiffs which include information about any of the following, royalties, streaming, licensing, and Comedy Works Rights agreements, Including all drafts, modifications, changes, and terminations of any agreements.
All Documents Concerning the agreements referenced in Request For Production No. 1, Including negotiating Communications, that reference or discuss Comedy Works Rights.
All Documents Concerning any substantive changes to the terms relating to Comedy Works Rights used in Your agreements with Affiliated Comedians.
All Documents Concerning any licensing fees or royalties for Comedy Works Rights.
All Documents Concerning Your practices of licensing the audio or audiovisual comedy recordings of the Affiliated Comedians to any Person that streams comedy recordings, Including Your licensing practices for streaming sites before and after the Partnership.
Documents sufficient to evidence all royalty payments Concerning Plaintiffs' Material, Including royalties for the Plaintiffs' Comedy Works Rights.
All Documents that have been communicated to Affiliated Comedians about the monetary and non-monetary benefits to You or the Affiliated Comedians of having their audio or audiovisual comedy recordings publicly performed by audio or audiovisual streaming services.
All Documents Concerning efforts by You, the Plaintiffs, or anyone else acting on Your or the Plaintiffs' behalf, to have the Plaintiffs' Material streamed or otherwise used by Pandora or Sirius XM.
All Documents Concerning royalty, license, or other payments You or any Person has made for Comedy Works Rights separate from or in addition to such payments made for sound or audiovisual recording rights.
REQUEST FOR PRODUCTION 10
*7 All Documents discussing the completed payments or need for payment on services already rendered of royalties for Comedy Works Rights, separate from the payment of royalties for the audio or audiovisual recordings embodying such Comedy Works Rights.
REQUEST FOR PRODUCTION 11
REQUEST FOR PRODUCTION 12
REQUEST FOR PRODUCTION 13
All Communications between You and any Plaintiffs Concerning Comedy Works Rights.
REQUEST FOR PRODUCTION 14
All Documents, Including any agreements, between You and WMG, or any other Person through which You distribute audio or audiovisual comedy recordings, Concerning Comedy Works Rights.
REQUEST FOR PRODUCTION 15
All Documents Concerning the Plaintiffs and the Plaintiffs' Materials Concerning Comedy Works Rights.
REQUEST FOR PRODUCTION 16
All Documents Concerning Lewis Black's affiliation with Spoken Giants and his termination of that affiliation.
REQUEST FOR PRODUCTION 17
All Documents Concerning George Lopez's album titled “The Wall,” Including any promotional arrangement for “The Wall” with Pandora, Including any exclusivity period associated with the release of “The Wall.”
REQUEST FOR PRODUCTION 18
All Documents Concerning Pandora or Sirius XM.
REQUEST FOR PRODUCTION 19
Documents sufficient to evidence all business changes to royalty reporting practices occurring as a result of or in anticipation of the Partnership, Including changes to agreements, licenses, and templates thereof.
REQUEST FOR PRODUCTION 20
All Documents Concerning copyright enforcement actions Concerning the Plaintiffs' Comedy Works Rights Material, Including any litigations, cease-and-desist letters, and takedown notices.
REQUEST FOR PRODUCTION 21
REQUEST FOR PRODUCTION 22
All Documents Concerning This Action.
III.
COMPLIANCE COSTS
Gorilla requests that Pandora pay for the costs of producing responses to their discovery requests.
Rule 45(d)(2)(B)(ii) requires a court to shift costs from a nonparty if the expense of complying with a party's subpoena is “significant.” Legal Voice v. Stormans Inc., 738 F.3d 1178, 1184 (9th Cir. 2013). “[O]nly two considerations are relevant” to the inquiry: “whether the subpoena imposes expenses on the nonparty, and whether those expenses are ‘significant.’ ” Id. (citation omitted).
Although cost-shifting is mandatory and the only relevant questions are the two (2) posed above, what constitutes a “significant expense” is capable of a “myriad [of] interpretations depending on the circumstances of a particular case.” United States v. McGraw-Hill Cos., 302 F.R.D. 532, 536 (C.D. Cal. 2014). For example, “an expense might be ‘significant’ ... to a small family-run business, while being ‘insignificant’ to a global financial institution.” Id.; see also Legal Voice, 738 F.3d at 1185 (finding $20,000 significant for nonprofit legal-aid group); Cornell v. Columbus McKinnon Corp., No. 13-cv-02188-SI, 2015 WL 4747260, at *4–5 (N.D. Cal. Aug. 11, 2015) (finding $227,597 not significant to FedEx and denying cost-shifting); Williams v. City of Dallas, 178 F.R.D. 103, 113 (N.D. Tex. 1998) (finding $9,000 in costs significant for two attorneys).
*8 The Court acknowledges there will most likely be expenses incurred by Gorilla in complying with this Order. Therefore, cost shifting is mandatory if the expenses are significant. See Legal Voice, 738 F.3d at 1184. Here, Gorilla estimates the cost of compliance before the Court's modifications will be $7,000 to $10,000. No. 169, Dkt. 28 at 21. They also claim that for a company of their size that is a significant expense. Id. at 21–22. The Court notes that Gorilla's range for expenses is within the range some courts have found significant. See, e.g., Williams, 178 F.R.D. at 113 (finding $9,000 in costs significant for two attorneys).
However, at this point, the Court can only speculate as to the precise amount of expenses, particularly where the Court has narrowed the requests. Furthermore, Gorilla has not substantiated their claim that the costs would be significant for an operation of their size. Accordingly, the Court finds that, while “the anticipated expenses are not of sufficient magnitude to justify prepayment ... they [maybe] potentially substantial.” Williams, 178 F.R.D. at 113 (finding $9,000 in costs significant for two attorneys but denying cost-shifting on anticipated expenses). After documents have been produced and a meaningful record has been established, the Court will review a motion for cost-shifting from Gorilla, if such a motion is necessary.
The Court admonishes the parties to reach an agreement regarding expenses on their own, bearing in mind the mandates of Rule 45 and Legal Voice, as well as Gorilla's burden to demonstrate that the costs are reasonable and “resulted from compliance” with the Court's order. See Michael Wilson & Partners, 520 Fed. Appx. at 741 (affirming the shifting of only half the costs where the non-parties “assume[d], rather than demonstrate[d], that all of their requested attorney's fees are reasonable”). The Court expects that Gorilla's accounting of its claimed expenses will be specific and lean.
