VINCENT A. AMBROSETTI Plaintiff, v. OREGON CATHOLIC PRESS and BERNADETTE FARRELL, Defendants Case No. 3:21-cv-00211-AC United States District Court, D. Oregon Filed October 21, 2021 Counsel Donald J. Schmid, Pro Hac Vice, Law Offices of Donald J. Schmid, South Bend, IN, Parna A. Mehrbani, Stephanie J. Grant, Tonkon Torp LLP, Portland, OR, for Plaintiff. Leonard D. DuBoff, Edward T. Fu, The DuBoff Law Group, LLC, Bert P. Krages, II, Bert P. Krages II, Attorney at Law, Portland, OR, for Defendants. Acosta, John V., United States Magistrate Judge ORDER ON MOTION TO COMPEL *1 Plaintiff Vincent Ambrosetti (“Ambrosetti”) brings this copyright infringement lawsuit against Oregon Catholic Press (“OCP”) and Bernadette Farrell (“Farrell”) (collectively, “Defendants”).[1] Defendants move to compel Ambrosetti to provide documents responsive to twenty-two of their requests for production (“RFPs”). The motion is granted in part and denied in part, as explained below. Background Ambrosetti is the author of the musical composition, “Emmanuel,” first published in 1980 as part of a collection, Singing Holy, and later published in another collection, I Will Sing. (Compl. ¶¶ 8, 11–12.) Farrell is the author of the musical composition, “Christ Be Our Light,” first published in 1993. (Compl. ¶ 14.) OCP is authorized by Farrell to sell, market, distribute, and license “Christ Be Our Light.” (Compl. ¶ 16.) Ambrosetti alleges that “Christ Be Our Light” is substantially similar to “Emmanuel” and that it infringes his copyright in the latter in violation of 17 U.S.C. § 106. (Compl. ¶¶ 10, 20.) Ambrosetti seeks damages, injunctive relief, attorney's fees, and costs. (Compl. ¶¶ 26–28.) Before the court is Defendants’ motion to compel documents responsive to their First and Fourth Requests for Production. (Defs.’ Mot. to Compel, ECF No. 62) (“Defs.’ Mot.”). Defendants’ First Request for Production (“First Request”) contains twenty-five RFPs, and their Fourth Request for Production (“Fourth Request”) contains four additional RFPs.[2] Id. In question are eight RFPs for which Defendant claims Ambrosetti's production was inadequate, and fourteen RFPs to which Ambrosetti objected. Id. Defendants move to compel fully-responsive productions for each of these RFPs. Legal standards The rules of discovery provide that any party may obtain from the other “any nonprivileged matter that is relevant to any party's claim or defense.” Fed. R. Civ. P. 26(b)(1). “The question of relevancy should be construed ‘liberally and with common sense’ and discovery should be allowed unless the information sought has no conceivable bearing on the case.” Rogue Advocs. v. Mountain View Paving, Inc., No. 1:15-CV-01854-CL, 2017 WL 6540047, at *2 (D. Or. Jan. 31, 2017) (quoting Soto v. City of Concord, 162 F.R.D. 603, 610 (N.D. Cal. 1995). Material sought need not be admissible as evidence to be discoverable. Fed. R. Civ. P. 26(b)(1). A requesting party may move for an order compelling a response when the responding party fails to provide requested material that is within the scope of discovery. Fed. R. Civ. P. 37(a)(1). The party seeking to compel discovery bears the burden of establishing that its requests are relevant, while the responding party carries the burden of showing that discovery should not be permitted and of “clarifying, explaining, and supporting its objections with competent evidence.” Doe v. Trump, 329 F.R.D. 262, 270 (W.D. Wash. 2018). “Boilerplate, generalized objections are inadequate and tantamount to not making any objection at all.” Yufa v. Hach Ultra Analytics, No. 1:09-CV-3022-PA, 2014 WL 11395243, at *1 (D. Or. Mar. 4, 2014) (citations omitted). *2 When a party objects to discovery on the grounds of attorney-client privilege, the party asserting privilege bears the burden of showing that the privilege protects the requested material. Id. The objecting party must make the privilege claim expressly and must describe the material withheld—without revealing the privileged information itself—with sufficient detail to allow the other parties to assess the privilege claim. Fed. R. Civ. P. 26(b)(5)(A). Discussion[3] I. Requests For Adequate Production (RFPs Nos. 5–8, 10, 16–18) Defendants seek to compel adequate responses to RFPs Nos. 5–8, 10, and 16–18. (Defs.’ Mot. at 2.) These requests generally concern statements made in Ambrosetti's complaint concerning the publication and performance history of “Emmanuel.” Id. Ambrosetti responds that he has “conducted a reasonable and diligent search and has already produced ... the documents he could locate.” (Pl.’s Resp. to Defs.’ Mot. to Compel, ECF No. 68 at 7) (“Pl.’s Resp.”) Defendants acknowledge that on March 28, 2021, Ambrosetti made some production of responsive documents. Id. Defendants do not support their claims that Ambrosetti's production was inadequate, but state only that production “fell woefully short of what was requested” and that Ambrosetti “has failed to produce the remaining documents ... despite requests to do so.” Id. Defendants do not specify, for example, which documents are or they believe are missing, and why they believe Ambrosetti is likely to have them. The court cannot simply take Defendants at their word that the response was inadequate. Defendants have not provided the court with a sufficient basis for granting their request. Accordingly, the motion to compel production on these RFPs is denied, but without prejudice should additional relevant facts become known at a later time. II. Requests Related To The Validity Of Plaintiff's Copyright Claim (RFPs Nos. 9, 12, 24) Another category of Defendants’ requests relates to the validity of Ambrosetti's copyright and his ownership of the same. Defendants request documents concerning the “sale, purchase, assignment, or other transfer of rights” of I Will Sing (RFP No. 9), license negotiations for “Emmanuel” (RFP No. 12), and communications related to infringement of the copyright of “Emmanuel” (RFP No. 24). (Defs.’ Mot. at 3–4.) Defendants assert that these are relevant to Ambrosetti's ability to establish a prima facie copyright claim. Id. With respect to RFP Nos. 9 and 24, Defendants claim that information concerning sale or transfer of rights in “Emmanuel” is relevant to “the extent of the rights that were granted to the publisher and the extent to which Plaintiff still owns the rights to ‘Emmanuel.’ ” (Defs.’ Mot. at 3.) As to RFP No. 12, Defendants argue that it is relevant to “whether ‘Emmanuel’ was a commonly-known work in the field of sacred music.” (Defs.’ Mot. at 4.) *3 To show copyright infringement, a plaintiff must prove: (1) that it owns a valid copyright in a work, and (2) that the defendant copied original elements of the work. Skidmore as Tr. for Randy Craig Wolfe Tr. v. Led Zeppelin, 952 F.3d 1051, 1064 (9th Cir. 2020) (citations omitted). To show “copying,” in the absence of direct evidence a plaintiff may “attempt to prove it circumstantially by showing that the defendant had access to the plaintiff's work and that the two works share similarities probative of copying.” Rentmeester v. Nike, Inc., 883 F.3d 1111, 1117 (9th Cir. 2018), overruled on other grounds by Skidmore, 952 F.3d 1051. Independent creation is a complete defense against copyright infringement. Id. (“No matter how similar the plaintiff's and the defendant's works are, if the defendant created his independently, without knowledge of or exposure to the plaintiff's work, the defendant is not liable for infringement.”). Against this standard, it is clear that Defendants’ requests are relevant to Ambrosetti's claim of copyright infringement. As Defendants note, a transfer of rights may affect Ambrosetti's standing to sue, and so RFPs Nos. 9 and 24 relate to Ambrosetti's ownership of a valid copyright. (Defs.’ Mot. at 3.) Though Defendants support RFP No. 12 primarily as it relates to actual damages (discussed below), they also note that the question of whether or not “Emmanuel” was widely known speaks to whether Farrell had access to it when she composed “Christ Be Our Light.” Id. at 4. Defendants are entitled to production on these requests. III. Requests Related To Pitch Sequences Defendants’ First Request contains three RFPs (Nos. 19–21) for “documents constituting musical compositions known to plaintiff or his employees, agents, and expert witnesses” that contain one of three pitch sequences. (Defs.’ Mot. at 7.) Plaintiff's expert witness has identified each pitch sequence as constituting a point of similarity between “Emmanuel” and “Christ Be Our Light.” (Defs.’ First Mot. to Compel, ECF No. 53, Ex. 3.) Defendants contend that the RFPs are relevant to whether those pitch sequences “commonly exist in the field of music.” (Defs. Mot. at 7.) Ambrosetti raises two objections. First, Ambrosetti asserts that his “knowledge of musical compositions with certain pitch sequences is not relevant to this case.” (Pl.’s Resp. at 10.). Second, Ambrosetti argues that the request constitutes an undue burden on him given the time and labor he and his expert witness would have to expend to respond, especially considering that Defendants have retained their own expert witness for that purpose. Id. at 11. “The sine qua non of copyright is originality.” Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991). As Defendants note, if the similarity between the two works is limited to material not original to Ambrosetti, then Ambrosetti's claim must fail as a matter of law. (Defs.’ Mot. at 7.) As the originality of “Emmanuel” is a central element of Ambrosetti's copyright infringement claim, any known prior art is highly relevant and proportional to this case. Defendants state they seek only those documents related to compositions currently known to Plaintiff and his employees, agents, or experts. (Defs.’ Mot. at 7.) They specifically state that “Plaintiff is not being asked to research whether works exist which are unknown to him or affiliated persons.” Id. Because Defendants have clarified and limited these requests, the court finds that Defendants’ requests do not constitute an undue burden on Ambrosetti. Defendants are entitled to documents responsive to RFPs Nos. 19–21. IV. Requests Relevant To Actual Damages (RFPs Nos. 12, 14–15, 23, 31–33) Defendants seek to compel documents that provide evidence of or related to Ambrosetti's earnings for “Emmanuel.” Defendants’ RFP No. 12 requests documents relating to negotiations to license “Emmanuel.” (Defs.’ Mot. at 4.) RFPs Nos. 14 and 15 seek Ambrosetti's “revenues, costs, and profits” in connection with licensing of, and sale of products incorporating, “Emmanuel.” (Defs.’ Mot. Ex. 1.) RFPs Nos. 31–33 seek documents relating to royalties paid to Ambrosetti, accountings of profits, and other “monies received by plaintiff.” (Defs.’ Mot. Ex. 2.) RFP No. 23 requests documents related to valuing of all of Ambrosetti's intellectual property since 2010. (Defs.’ Mot. at 8.) *4 Defendants contend that each of these requests is relevant to potential damages—that because Ambrosetti is seeking actual damages, the extent of his earnings is relevant to their defense and therefore permitted. (Defs.’ Mot.) Ambrosetti replies by stating, apparently for the first time on the record, that he is not seeking actual damages. (Pl.’s Resp. at 5.) He asserts that “[f]ormally and in writing, counsel for plaintiff confirmed that in this lawsuit ... the plaintiff will be seeking only the profits ... that are attributable to the infringement and statutory damages. Plaintiff will not seek an award of his actual damages as evidenced by a decline in revenues for ‘Emmanuel.’ ” (Pl.’s Resp. at 16, quoting Ex. 1.) (internal quotations omitted.) The court first notes that in a copyright infringement action, a plaintiff may elect to recover actual damages and Defendants’ profits, or statutory damages, but not both. 17 U.S.C. § 504(a) provides that “an infringer of copyright is liable for either — (1) the copyright owner's actual damages and any additional profits of the infringer, as provided by subsection (b); or statutory damages, as provided by subsection (c).” (emphasis added). A plaintiff may elect to pursue statutory damages instead of actual damages and profits “at any time before final judgment is rendered.” 17 U.S.C. § 504(c)(1). Once the plaintiff elects statutory damages, however, it may no longer pursue actual damages or profits. Twin Peaks Prods., Inc. v. Publications Int'l, Ltd., 996 F.2d 1366, 1380 (2d Cir. 1993); see also Nintendo of Am., Inc. v. Dragon Pac. Int'l, 40 F.3d 1007, 1010 (9th Cir. 1994) (“once a copyright owner elects to recover statutory damages, he may not recover actual damages as well under the Copyright Act”). As long as Ambrosetti claims to be pursuing both Defendants’ profits and statutory damages, he has not made an election under § 504(a). In his complaint, Ambrosetti requests “an award of monetary damages sufficient to compensate the plaintiff for the injuries suffered” and “[an] award of the defendants’ profits and unjust enrichment realized from their infringement ... of the plaintiff's copyright in ‘Emmanuel.’ ” (Compl. Prayers for Relief 1 and 2.) Ambrosetti's pleadings make clear that actual damages remain at issue. As such, Defendants’ requests are relevant both to Ambrosetti's claims and to their defense, and are proportional to the needs of the case. The court agrees that if Ambrosetti were to drop his claim for actual damages and do so with prejudice, Defendants’ requests for documents relating to actual damages would cease to be relevant or subject to discovery. He must do this, however, by amending his pleadings and not by the less formal and non-binding mechanism of an email to Defendants’ counsel or in a response brief to a discovery motion. Likewise, if Ambrosetti were to elect to pursue statutory damages, he would permanently forego both actual damages and any claim to Defendants’ profits, and thus RFPs based on calculating actual damages no longer would be relevant. However, unless and until Ambrosetti amends his pleadings in one of those two ways, Defendants are entitled to discovery on these RFPs. V. Remaining RFPs A. RFP No. 30 Defendants request “a full and complete copy of ‘I Will Sing’ by Vince Ambrosetti.” (Defs.’ Mot. at 6.) Ambrosetti responds that the songbook is available at a “nominal cost” for Defendants to purchase online.[4] (Defs.’ Mot. at 6.) The songbook in question includes ‘Emmanuel,’ the song at the center of this dispute. (Compl. ¶ 12.) It is thus highly relevant to both parties’ claims and defenses. Ambrosetti is not entitled to shift the costs of discovery—especially “nominal” costs—to Defendants without a protective order from the court. See Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 358 (1978) (“[T]he presumption is that the responding party must bear the expense of complying with discovery requests, but may invoke the district court's discretion under Rule 26(c) ... including orders conditioning discovery on the requesting party's payment of the costs of discovery.”). Ambrosetti has not provided the court with any reason to shift the costs of producing I Will Sing to Defendants or why he should not be required to produce a document that is in his possession, custody, or control, as the discovery rules require. (Pl.’s Resp.) Instead, he argues that Defendants are acting contrary to Rule 1's instruction to parties to “secure the just, speedy, and inexpensive determination of every action and proceeding” by having filed a motion to compel instead of purchasing the book. (Pl.’s Resp. at 7.) Ambrosetti's rationale improperly reverses the rules’ requirements. Defendants’ motion is granted on this RFP. B. RFP No. 11 *5 Defendants’ motion requests documents responsive to their First Request for Production Nos. 5–12. The court has addressed RFPs Nos. 5–10 and 12, above. Defendants do not address RFP No. 11 (“All documents relating to any analysis as to whether there is substantial similarity between “Emmanuel” and any other musical work created by a third party”) anywhere in their motion. Because the moving party bears the burden of explaining why the court should compel production, and Defendants have not provided any explanation at all, the court denies Defendants’ motion with respect to RFP No. 11 without prejudice. Order Based on the foregoing, Defendants’ Motion to Compel (ECF No. 62 is GRANTED in part and DENIED in part, as follows: 1. Within 30 days, Ambrosetti is hereby ORDERED to produce: a. Documents responsive to RFPs Nos. 14–15, 19–21, and 23 from Defendants’ First Request for Production, unless Ambrosetti dismisses any claim for actual damages and Defendants’ profits with prejudice; b. Documents responsive to RFPs Nos. 9, 12, and 24 from Defendants’ First Request for Production; c. Documents responsive to Defendants’ Fourth Request for Production; and d. Where Ambrosetti asserts privilege, sufficient information to Defendants as to allow them to evaluate the privilege claim. 2. Defendants’ motion as to RFPs Nos. 5–8, 10–11, and 16–18 is DENIED without prejudice. 3. Each party is to pay its own costs. IT IS SO ORDERED. DATED this 21st day of October, 2021. Footnotes [1] OCP also has sued Ambrosetti for declaratory relief on similar facts, and that case is consolidated with the instant case. See Oregon Catholic Press v. Ambrosetti, Case No. 3:19-cv-01397-AC. [2] Defendants’ RFPs are numbered serially, such that each set of requests begins with Request No. 1. Plaintiff's response renumbers the RFPs sequentially, such that the requests in Defendants’ Fourth Request are numbered 30–33. For convenience and accuracy, the court adopts Plaintiff's numbering. [3] Ambrosetti contests Defendants’ certification of a good faith effort to meet and confer and requests that the court deny the motion on grounds of false certification. Local Rule 7-1(a)(3) provides that a “[c]ourt may deny any motion that fails to meet this certification requirement,” (emphasis added). Because it is clear from the record that the parties will not be able to agree on the matters in question on their own, the court declines to consider Ambrosetti's request and instead decides the motion on its merits. The court will not consider further motions to compel unless the parties have conferred in compliance with LR 7-1(a). [4] https:..www.ilpmusic.org/product/MB400.html