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noting that Rule 26(B) requires description and categorization of computerized data, including deleted e-mails, and stating that "[t]he disclosing party shall take reasonable steps to ensure that it discloses any back-up copies of files or archival tapes that will provide information about any "deleted" electronic data"
Summary of this case from The Antioch Co. v. Scrapbook Borders, Inc.Opinion
No. 00-2160-JWL
December 15, 2000
MEMORANDUM AND ORDER
Pending before the Court are Defendant Yahoo! Inc.'s ("Yahoo!") Motion to Compel Disclosure of Damage Evidence (doc. 19) and Plaintiff Joedy Kleiner's ("Plaintiff") Motion to Compel Disclosure and for Sanctions (doc. 21). Defendant Yahoo! moves to compel Plaintiff to provide computations and supporting evidence of her claimed damages as required by Fed.R.Civ.P. 26(a)(1)(C). Plaintiff moves to compel Yahoo! to disclose all voice mails, electronic mail ("e-mail"), web sites, web pages, and other electronic data relevant to the above action. Plaintiff also seeks sanctions against Yahoo! for its failure to comply with Fed.R.Civ.P. 26. For the reasons stated below, both motions to compel will be granted and Plaintiff's request for imposition of sanctions will be taken under advisement.
FACTUAL BACKGROUND
This is a copyright infringement action. Plaintiff claims eighteen of her copyrighted photographs were unlawfully posted by defendant Becky Burns on a web site hosted by defendant Yahoo! She further alleges defendant Yahoo! reactivated this web site after being notified of a possible copyright infringement. Defendants dispute Plaintiff's claims.
Plaintiff filed this lawsuit on April 14, 2000. Prior to filing this lawsuit, Plaintiff claimed there were eighteen different copyrighted pictures posted on the relevant website. See Exhibit E to Yahoo!'s Motion. At that time, Plaintiff calculated her damages as $1,800,000 ($100,000 per photograph) and noted there was case law suggesting each "hit" may be considered a separate infringement. Id.
Plaintiff states her initial statutory damage calculations were computed prior to December 9, 1999 and were based on the maximum specified in 17 U.S.C. § 504(c). Plaintiff goes on to state, however, that the statutory maximum amount for willful infringement claims has been increased to $150,000 since that date.
On August 1 and August 14, 2000, Plaintiff provided initial disclosures to Defendants pursuant to Fed.R.Civ.P. 26(a)(1). In her disclosures, Plaintiff set forth her computation of damages as follows: "Up to $100,000.00 statutory damages for each transmission of a copyrighted photograph, such transmission being a willful violation of the Copyright Act of 1976, 17 U.S.C. § 101 et. seq." See Exhibit A to Yahoo!'s Motion. In conjunction with her disclosures, Plaintiff produced copies of three of the eighteen pictures at issue. Plaintiff noted she had downloaded all three of these pictures from the relevant website. See Exhibit D to Yahoo!'s Motion. One of the three pictures produced included a credit line indicating the photograph had been taken by someone other than Plaintiff. Id.
Yahoo! provided its initial disclosures to Plaintiff on August 11, 2000. Yahoo!'s disclosures consisted of twenty-nine pages of correspondence sent back and forth between the parties regarding this action. Yahoo! did not produce any copies or descriptions of web sites, web pages, e-mails, voice mails, or other electronic data.
DISCUSSION
I. Defendant Yahoo!'s Motion to Compel
Yahoo! seeks an order compelling Plaintiff to produce a computation of damages and all evidence supporting such damages as required by the Federal Rules of Civil Procedure. Rule 26(a)(1)(C) provides that
[A] party shall . . . provide to other parties: a computation of any category of damages claimed by the disclosing party, making available for inspection and copying as under Rule 34 the documents or other evidentiary material, not privileged or protected from disclosure, on which such computation is based, including material bearing on the nature and extent of injuries suffered.
A defendant generally is entitled to a specific computation of a plaintiff's damages under Fed.R.Civ.P. 26(a)(1)(C) and are further entitled to have made available for inspection and copying the documents and other evidentiary material on which such computation is based. Midwest Grain Prod. Inc. v. Envirofuels Mktg, Inc., No. 95-2355-EEO, 1996 WL 445070, at *11 (D.Kan. July 12, 1996). The advisory committee notes to Rule 26, however, state that "a party is not expected to provide a calculation of damages which, as in many patent infringement actions, depends on information in the possession of another party or person." Fed.R.Civ.P. 26 advisory committee's notes.
A. Production of Documents or Other Evidentiary Material
Yahoo! seeks the evidence upon which Plaintiff relies in claiming statutory damages for the alleged posting of eighteen of her copyrighted photographs during the relevant time period. Yahoo! notes that in support of her claim for damages, Plaintiff only has produced evidence of two of her copyrighted photographs posted on Becky Burn's web site. In response to defendant Yahoo!'s request for more evidence, Plaintiff claims she has produced over 600 pages of documents evidencing her damage claims.
The Court finds, however, that conspicuously missing from Plaintiff's disclosures is an affirmation declaring that Plaintiff does not possess additional documents or evidentiary material upon which her damage claims are based. For this reason, the Court will grant defendant Yahoo!'s Motion to Compel and will order Plaintiff to produce all evidence supporting her claim for damages in each of the eighteen claims of copyright infringement. Thus, Plaintiff shall, within ten (10) days of the date of this Order, either (1) disclose to Defendants such information (including but not limited to any evidence of the posting of eighteen of her photographs on defendant Yahoo!'s site during the relevant time period); or (2) inform Defendants that, other than that already produced, she does not possess any additional evidence.
B. Computation of Actual Damages
Yahoo! also seeks a computation of Plaintiff's actual damages with regard to the alleged copyright infringement. Plaintiff argues she is not required to disclose a computation of actual damages because she seeks statutory damages in lieu of actual damages.
Pursuant to 17 U.S.C. § 504(c), a copyright owner may elect to recover statutory damages in lieu of any other form of monetary relief, including actual damages. Schmidt v. Holy Cross Cemetery, 840 F. Supp. 829, 835 (D.Kan. . 1993). Legislative history demonstrates the drafters of this statute did not intend to require a plaintiff electing minimum statutory damages to submit proof of actual damages and profits:
Recovery of actual damages and profits under section 504(b) . . . or of statutory damages under section 504(c) . . . is alternative and for the copyright owner to elect; as under the present law, the plaintiff in an infringement suit is not obligated to submit proof of damages and profits and may choose to rely on the provisions for minimum statutory damages. However, there is nothing in section 504 to prevent a court from taking account of evidence concerning actual damages and profits in making an award of statutory damages within the range set out in subsection (c).Notes of Committee on the Judiciary, H.R. Rep. No. 94-1476 (1976), reprinted in 17 U.S.C.A § 504.
Based on this legislative history, a plaintiff electing minimum statutory damages is not required to submit proof of actual damages and profits; when anything more than the statutory minimum is elected, however, the court's discretion and sense of justice are controlling with respect to the sum of damages awarded within the statutory range. Schmidt v. Holy Cross Cemetery, 840 F. Supp. at 835. Because Plaintiff's initial disclosures indicate she is seeking maximum statutory damages, the court has discretion to determine the amount of damages to award within the statutory range.
To that end, this Court previously has set forth some of the factors it may consider in determining damages within the statutory range: (1) the expenses saved by the defendants in connection with the infringements; (2) the revenues lost by the plaintiff as a result of the defendants' conduct; (3) the infringer's state of mind; and (4) wrongfully acquired gains or unjust enrichment of the defendants. Id. Given the fact that actual damages are included as one of the factors that may be considered by the Court in determining an award of damages within the statutory range, as well as the possibility that Defendants may request this Court consider actual damages as part of that process, the Court will grant Defendants' Motion to Compel production of a computation of Plaintiff's actual damages.
Consistent with the Court's specific directive in section I(A) above, Plaintiff also will be ordered to either disclose to Defendants any evidence she possesses of her actual damages or inform Defendants that, other than that already produced, she does not possess any additional evidence of actual damages.
II. Plaintiff's Motion to Compel Disclosure of Electronic Data
In her Motion, Plaintiff requests the Court compel Yahoo! to disclose e-mails, voice mails, web sites, web pages and all other forms of electronic data in its possession, custody or control relevant to disputed facts alleged with particularity in the pleadings. In support of her request, Plaintiff states she was able to independently retrieve two pieces of electronic data relevant to disputed facts alleged with particularity in the pleadings, but that such data was not produced by Yahoo! in its initial disclosures.Yahoo! responds by stating it has complied with its Rule 26(a)(1) obligations with regard to data compilations by producing all relevant electronic data in its possession, custody and control. Yahoo! further responds by stating it diligently is attempting to locate backup copies of the two pieces of electronic data attached to Plaintiff's Motion, as well as backup copies of defendant Burn's web site.
Federal Rule of Civil Procedure 26(a)(1)(B) requires a party provide to other parties "a copy of, or a description by category and location of, all documents, data compilations, and tangible things in the possession, custody, or control of the party that are relevant to disputed facts alleged with particularity in the pleadings."
As a preliminary matter, the Court finds implausible Yahoo!'s contention that it does not have in its possession, custody or control any data compilations relevant to this lawsuit, especially given the nature of Yahoo!'s business. Accordingly, the Court will grant Plaintiff's Motion and order Yahoo! to disclose all data compilations in its possession, custody and control that are relevant to disputed facts alleged with particularity in the pleadings. More specifically, Rule 26(a)(1)(B) disclosures should "describe and categorize, to the extent identified during the initial investigation, the nature and location of potentially relevant documents and records, including computerized data and other electronically-recorded information, sufficiently to enable opposing parties (1) to make an informed decision concerning which documents might need to be examined, at least initially, and (2) to frame their document requests in a manner likely to avoid squabbles resulting from the wording of the requests." Fed.R.Civ.P. 26 advisory committee's notes, 1993 amendments (emphasis added).
Because the parties previously signed a stipulated protective order prohibiting the destruction of discoverable evidence by either party, the Court can only assume Yahoo!'s failure to produce data compilations has not been brought about by Yahoo!'s destruction (inadvertent or intentional) of such electronic data.
The Court will not compel Yahoo! to provide a copy of documents, data compilations, and tangible things pursuant to Rule 26(a)(1)(B) because this subsection of the rule does not require actual production. The Court will, however, compel Yahoo! to either provide to Plaintiff (1) a copy of, or (2) a description by category and location of, all documents, data compilations, and tangible things in its possession, custody, or control that are relevant to the disputed facts alleged.
As used by the advisory committee, "computerized data and other electronically-recorded information" includes, but is not limited to: voice mail messages and files, back-up voice mail files, e-mail messages and files, backup e-mail files, deleted e-mails, data files, program files, backup and archival tapes, temporary files, system history files, web site information stored in textual, graphical or audio format, web site log files, cache files, cookies, and other electronically-recorded information. See, e.g., Hon. Shira A. Scheindlin and Jeffrey Rabkin, Electronic Discovery in Federal Civil Litigation: Is Rule 34 Up to the Task?, 41 B.C. L.Rev. 327, 333 (2000). The disclosing party shall take reasonable steps to ensure that it discloses any back-up copies of files or archival tapes that will provide information about any "deleted" electronic data.
The Court does not intend this list to be exhaustive.
An article in the Winter 1999 issue of the John Marshall Journal of Computer and Information provides significant insight into the retrieval of "deleted" electronic data and the use of back-up and archival files and tapes:
Back-up copies of files may be available as a result of formal or informal preservation of information. Formally, companies often make timed back-ups of all of the information stored on a computer network at given points. These archival tapes may be preserved for short periods of time as a source of memory in the event of an emergency such as accidental deletion or loss of important data. Subsequently, such tapes may be recycled for further archiving or other use. Archival tapes may also be preserved for longer periods of time either because of government-mandated recordkeeping requirements or simply for purposes of historical preservation. Informally, employees may make their own random back-up copies of files to guard against accidental deletion or system failure. These back-ups may employ different file names. Indeed, different versions of evolving documents may be saved under different file names.
Consequently, there are several sources for retrieving deleted documents or drafts of documents. Archival tapes may contain final versions and drafts of documents that were subsequently deleted from the hard disk on a computer terminal or network file server. Similarly, copies or drafts of deleted documents may still be found on the hard disk of a computer terminal or network file server under different file names than the file that was deleted.
Mark D. Robins, Computers and the Discovery of Evidence — A New Dimension to Civil Procedure, 17 J. Marshall J. Computer Info. L. 411, 416-17 (1999) (citations omitted).
CONCLUSION
Based on the discussion above, the Court hereby enters the following orders:
(1) Defendant Yahoo!'s Motion to Compel Disclosure of Damage Evidence (doc. 19) is granted and Plaintiff shall, within ten (10) days of the date of this Order, either disclose to Defendants computations and supporting evidence of her claimed damages as requested or inform Defendants that, other than that already produced, she does not possess any additional evidence;
(2) Plaintiff's Motion to Compel Disclosure (doc. 21) is granted and Yahoo! shall, within ten (10) days from the date of this Order, disclose all data compilations, computerized data and other electronically-recorded information as specifically defined in this Order. If Yahoo! does not disclose, or believes it is unable to disclose, this information to Plaintiff, then Yahoo! shall show cause to the Court within ten (10) days of this Order why it did not comply with this Order and shall specifically describe the efforts it made to comply with this Order;
(3) Plaintiff's Motion for Sanctions against Yahoo! (doc. 21) is taken under advisement to allow the Court an opportunity to determine whether Yahoo!'s initial discovery responses were sanctionable; and
(4) The parties shall continue to preserve evidence that they know, or should know, is relevant to the ongoing litigation, including preservation of all data compilations, computerized data and other electronically-recorded information as specifically defined in this Order.