Lenz v. Universal Music Group Inc. et al, No. 5:2007cv03783 - Document 196 (N.D. Cal. 2009)
Court Description: ORDER OVERRULING 170 OBJECTION TO AUGUST 25, 2009 ORDER GRANTING MOTION TO COMPEL PRODUCTION OF UNIVERSAL-PRINCE COMMUNICATIONS AS TO WHICH UNIVERSAL ASSERTS PRIVILEGE. Signed by Judge Jeremy Fogel on 10/29/2009. (jflc2, COURT STAFF) (Filed on 10/30/2009)
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Lenz v. Universal Music Group Inc. et al Doc. 196 1 **E-Filed 10/30/2009** 2 3 4 5 6 7 8 IN THE UNITED STATES DISTRICT COURT 9 FOR THE NORTHERN DISTRICT OF CALIFORNIA 10 SAN JOSE DIVISION 11 12 Plaintiff 13 14 v. 15 UNIVERSAL MUSIC CORP., et al., 16 Case Number C 07-3783 JF (RS) STEPHANIE LENZ, ORDER OVERRULING OBJECTION TO AUGUST 25, 2009 ORDER GRANTING MOTION TO COMPEL PRODUCTION OF UNIVERSALPRINCE COMMUNICATIONS AS TO WHICH UNIVERSAL ASSERTS PRIVILEGE Defendants 17 18 19 20 I. BACKGROUND Plaintiff Stephanie Lenz brought the instant action against Defendants Universal Music 21 Corp., Universal Music Publishing, Inc., and Universal Music Publishing Group (collectively 22 “Universal”) alleging a violation of 17 U.S.C. § 512(f) stemming from a thirty second video she 23 posted on YouTube. The video features her young toddler performing an impromptu dance to 24 the song “Let’s Go Crazy” by the artist professionally known as Prince. Universal administers 25 the copyright to the composition. Lenz entitled the video “Let’s Go Crazy #1.” On June 4, 2007, 26 Universal sent YouTube a notice requesting that YouTube remove the video. YouTube complied 27 and sent Lenz an e-mail notifying her that it had done so. After receiving two e-mails from Lenz 28 1 Case No. C 07-3783 JF (RS) ORDER OVERRULING OBJECTION TO AUGUST 25, 2009 ORDER GRANTING MOTION TO COMPEL PRODUCTION OF UNIVERSAL-PRINCE COMMUNICATIONS AS TO WHICH UNIVERSAL ASSERTS PRIVILEGE (JFEX2) Dockets.Justia.com 1 demanding that the video be restored, YouTube agreed. Lenz thereafter brought suit against 2 Universal in connection with its takedown notice. 3 On August 25, 2009, Magistrate Judge Seeborg granted in part and denied in part 4 Plaintiffs’ motion to compel production of communications between Universal, Prince, and third 5 parties as well as policies, procedures, and documents relating to the takedown notice, the scope 6 of Universal’s interest in the copyrighted work at issue, and attempts to exploit the market for the 7 “Let’s Go Crazy” composition (“August 25th Order”). Universal has filed a timely objection to 8 the August 25th Order, and the parties have submitted appropriate briefing. For the reasons 9 discussed below, the objection will be overruled. 10 11 II. LEGAL STANDARD Universal has the burden of showing that the magistrate judge’s ruling is clearly 12 erroneous or contrary to law. “[T]he magistrate’s decision on a nondispositive issue will be 13 reviewed by the district court judge under the clearly erroneous standard.” Bahn v. NME 14 Hospitals, Inc., 929 F.2d 1404, 1414 (9th Cir. 1991); see also FED . R. CIV . P. 72(a) (“The district 15 judge in the case must . . . set aside any part of the order that is clearly erroneous or is contrary to 16 law.”). “In finding that the magistrate judge’s decision is ‘clearly erroneous,’ the Court must 17 arrive at a definite and firm conviction that a mistake has been committed.” EEOC v. Lexus of 18 Serramonte, No. C 05-0962 SBA, 2006 WL 2619367, at *2 (N.D. Cal. Sept. 5, 2006). “This 19 standard is extremely deferential and the [m]agistrate’s rulings should be considered the final 20 decisions of the [d]istrict [c]ourt.” Id. 21 22 23 III. DISCUSSION A. Universal’s Communications Are Not Privileged Universal claims that the communications between Universal and Prince relating to the 24 enforcement of Prince’s copyrights are privileged. The general privilege standard under federal 25 law is that “confidential communications made by a client to an attorney to obtain legal services 26 are protected from disclosure.” Clarke v. American Commerce Nat’l Bank, 974 F.2d 127, 129 27 (9th Cir. 1992). Universal bears the burden of establishing each element of attorney-client 28 2 Case No. C 07-3783 JF (RS) ORDER OVERRULING OBJECTION TO AUGUST 25, 2009 ORDER GRANTING MOTION TO COMPEL PRODUCTION OF UNIVERSAL-PRINCE COMMUNICATIONS AS TO WHICH UNIVERSAL ASSERTS PRIVILEGE (JFEX2) 1 privilege. Tennenbaum v. Deloitte & Touche, 77 F.3d 337, 341 (9th Cir. 1996). For the attorney- 2 client privilege to apply, (1) legal advice must be sought, (2) from a professional legal adviser in 3 his or her capacity as such, (3) with the communication relating to that purpose, (4) made in 4 confidence, (5) by the client. Admiral Ins. Co. v. U.S. Dist. Ct., 881 F.2d 1486, 1492 (9th Cir. 5 1989). The common-interest privilege is an exception to the rule that disclosure of an attorney- 6 client privileged communication to a third party destroys confidentiality and thereby waives the 7 privilege. See Nidec Corp. v. Victor Co. of Japan, 249 F.R.D. 575, 578 (N.D. Cal. 2007). The 8 common-interest privilege saves an otherwise privileged communication from waiver only where 9 the communication is shared with the third party in order to further a matter of common legal 10 interest. See id. at 579-80. It does not protect communications made in furtherance only of a 11 common business interest. Bank Brussels Lambert v. Credit Lyonnaise (Suisse) S.A., 160 F.R.D. 12 437, 448 (S.D.N.Y. 1995). 13 Universal has failed to satisfy its burden to demonstrate that the subject communications 14 are protected by attorney-client privilege. Universal argues that pursuant to a 2005 15 Administration Agreement giving it the sole right to take legal action on Prince’s behalf, 16 Universal is acting as Prince’s agent or attorney-in-fact. However, Magistrate Judge Seeborg 17 found that 18 19 20 21 22 the agreement provides that if Prince notifies Universal of infringement, Universal may choose to retain attorneys to pursue the matter, but is not required to do so. If an attorney is retained, Universal maintains complete control over the litigation. If Universal declines to hire counsel, Prince is left to decide whether he wants to pursue legal action at his own expense. In short, it appears that the agreement simply designates Universal to act as an agent with respect to Prince’s business interests, but does not represent retention of Universal in-house counsel to provide him with legal services. 23 Universal’s counsel also explicitly disavowed any claim that Universal and Prince have an 24 attorney-client relationship of their own: “I want to be clear in terms of what the proposed—the 25 claim is not that Universal is Prince’s attorney.” Miksch Decl. Exh. D at 34:16-18. 26 The fact that the communications are related to information provided to or by attorneys 27 28 3 Case No. C 07-3783 JF (RS) ORDER OVERRULING OBJECTION TO AUGUST 25, 2009 ORDER GRANTING MOTION TO COMPEL PRODUCTION OF UNIVERSAL-PRINCE COMMUNICATIONS AS TO WHICH UNIVERSAL ASSERTS PRIVILEGE (JFEX2) 1 who work for Universal does not in itself make the communications privileged. “[T]he 2 presumption that attaches to communications with outside counsel does not extend to 3 communications with in-house counsel . . . [b]ecause in-house counsel may operate in a purely or 4 primarily business capacity in connection with many corporate endeavors.” United States v. 5 ChevronTexaco Corp., 241 F. Supp. 2d 1065, 1076 (N.D. Cal. 2002). Universal has not shown 6 that the primary purpose of any communications reflecting Universal’s practices with respect to 7 takedown notices was to render legal advice. As Magistrate Judge Seeborg found, “it is entirely 8 plausible that . . . such notices may be dispatched a part of a business strategy to appease clients.” 9 Without more, the magistrate judge’s determination is not clearly erroneous. 10 Because it has failed to establish the applicability of the attorney-client privilege, 11 Universal’s argument with respect to the common-interest privilege is moot. 12 B. Universal Waived Work Product Doctrine Protection 13 Universal also claims that the subject communications are protected by the work product 14 doctrine. “Boilerplate objections or blanket refusals inserted into a response to a Rule 34 request 15 for the production of documents are insufficient to assert a privilege.” Burlington N. & Santa Fe 16 R.R. Co. v. U.S. Dist. Ct., 408 F.3d 1142, 1149 (9th Cir. 2005). A privilege should be asserted 17 within thirty days of a request for production. FED . R. CIV . P. 34(b)(2)(A). However, the Ninth 18 Circuit has rejected a per se waiver rule. Burlington, 408 F.3d at 1149. To determine whether a 19 privilege is waived, the Court must consider: (1) the degree to which the objection or assertion of 20 privilege enables the litigant seeking discovery and the court to evaluate whether each of the 21 withheld documents is privileged; (2) the timeliness of the objection and accompanying 22 information about the withheld documents; (3) the magnitude of the document production; and 23 (4) other particular circumstances of the litigation that make responding to discovery unusually 24 easy or unusually hard. Id. “These factors should be applied in the context of a holistic 25 reasonableness analysis, intended to forestall needless waste of time and resources, as well as 26 tactical manipulation of the rules and the discovery process.” Id. 27 28 Universal is a sophisticated corporate litigant and a repeat player in lawsuits regarding 4 Case No. C 07-3783 JF (RS) ORDER OVERRULING OBJECTION TO AUGUST 25, 2009 ORDER GRANTING MOTION TO COMPEL PRODUCTION OF UNIVERSAL-PRINCE COMMUNICATIONS AS TO WHICH UNIVERSAL ASSERTS PRIVILEGE (JFEX2) 1 copyrighted material it administers on behalf of artists who own the copyrights. Universal 2 admits that it did not raise the work product doctrine in its original privilege logs, in defending 3 against Plaintiff’s motion to compel, or before Magistrate Judge Seeborg. Rather, Universal 4 asserted the work product doctrine’s protections for the first time in its revised logs after 5 Magistrate Judge Seeborg issued the August 25th Order. Having failed to make a specific and 6 timely assertion of work product protection, Universal waived such protection. 7 8 IV. ORDER The objection is OVERRULED. 9 IT IS SO ORDERED. 10 11 DATED: 10/29/2009 12 _______________________ JEREMY FOGEL United States District Judge 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 5 Case No. C 07-3783 JF (RS) ORDER OVERRULING OBJECTION TO AUGUST 25, 2009 ORDER GRANTING MOTION TO COMPEL PRODUCTION OF UNIVERSAL-PRINCE COMMUNICATIONS AS TO WHICH UNIVERSAL ASSERTS PRIVILEGE (JFEX2) 1 This Order has been served upon the following persons: 2 Corynne McSherry corynne@eff.org 3 4 Jason M. Schultz jason@eff.org 5 Marcia Clare Hofmann marcia@eff.org 6 7 Ashok Ramani axr@kvn.com 8 Melissa Jeanne Miksch mmiksch@kvn.com 9 10 Michael F. Kelleher mkelleher@flk.com 11 Michael Soonuk Kwun mkwun@kvn.com 12 13 Suzanne Elizabeth Rode srode@flk.com 14 Kelly Max Klaus kelly.klaus@mto.com 15 16 Laura Ashley Aull ashley.aull@mto.com 17 Melinda Eades LeMoine melinda.lemoine@mto.com 18 19 20 21 22 23 24 25 26 27 28 6 Case No. C 07-3783 JF (RS) ORDER OVERRULING OBJECTION TO AUGUST 25, 2009 ORDER GRANTING MOTION TO COMPEL PRODUCTION OF UNIVERSAL-PRINCE COMMUNICATIONS AS TO WHICH UNIVERSAL ASSERTS PRIVILEGE (JFEX2)
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