Symettrica Entertainment, Ltd. v. UMG Recordings, Inc Case No. CV 19-1192-CJC (KS) United States District Court, C.D. California Filed July 17, 2020 Counsel Thomas K. Richards, Michael Alan Trauben, Singh Singh and Trauben LLP, Beverly Hills, CA, for Symettrica Entertainment, Ltd. Michael J. Niborski, Benjamin S. Akley, Mary Balzer, Pryor Cashman LLP, Los Angeles, CA, Donald S. Zakarin, Pro Hac Vice, Pryor Cashman LLP, New York, NY, for UMG Recordings, Inc. Stevenson, Karen L., United States Magistrate Judge Proceedings: (IN CHAMBERS) ORDER RE: DEFENDANT/COUNTERCLAIM-PLAINTIFF UMG RECORDINGS, INC.'S MOTION TO COMPEL [Dkt. No. 58] *1 Before the Court is Defendant/Counterclaim-Plaintiff UMG Recordings, Inc.'s (“Defendant's”) Motion to Compel, filed in the Joint Stipulation format (“Joint Stip.”) pursuant to Local Rule 37-2 on June 9, 2020 (the “Motion”). (Dkt. No. 58.) On June 17, 2020, the parties each filed a Supplemental Memorandum. (Dkt. Nos. 66 (Plaintiff's); 67 (Defendant's).) On July 1, 2020, the Court held oral argument telephonically on the Motion[1] and took the matter under submission. (Dkt. No. 69.)[2] For the reasons discussed below, the Court GRANTS the Motion in part and defers ruling on the privilege log issues pending in camera review. RELEVANT BACKGROUND The Court previously provided a detailed summary of the allegations of the Complaint in its order dated April 30, 2020 regarding Plaintiff's motion to compel; therefore, the Court assumes the parties are familiar with those allegations and will not repeat them here. (See Dkt. No. 55.) The Court provides the following procedural background specifically relevant to the instant Motion. The Motion concerns whether Plaintiff has fully complied with the Court's Order of April 30, 2020 (the “April 30 Order”) that granted Defendant's motion to compel with respect to Defendant's Request for Production No. 13. (Dkt. No. 55.) In the April 30 Order, the Court specifically found that the Fair Use Opinion Letter referenced in the Complaint was not privileged and the Complaint “contain[ed] specific and extensive allegations about the nature and content of the D+C fair use analysis[.]” (Dkt. No. 55 at 16.) On that basis, the Court required Plaintiff within fourteen days of the date of the April 30 Order: *2 “[T]o produce documents sufficient to reflect the factual and legal underpinnings of the D+C fair use analysis that supports the Fair Use Opinion Letter, including the fair use log.” (Dkt. No. 55 at 18.)[3] THE MOTION A. Defendant's Arguments In the Motion, Defendant complains that Plaintiff failed to comply with the April 30 Order in two ways. First, Defendant argues that Plaintiff has “selectively provide[d] information, creating orphan documents by producing emails without any of the attachments to those emails.” (Joint Stip. at 1.) Defendant contends that Plaintiff has made the emails it produced unusable by failing to produce documents and videos attached the to those emails. (Id.) Defendant notes that, when originally sent, three of the emails with clearance counsel that Plaintiff produced indicate that they had attached documents identified as “Clearance Log – Drake,” “Clearance Log – Drake 2,” and “Clearance Log – Drake 3.” (Id. at 9; see also Declaration of Benjamin Akley (“Akley Decl.”) ¶ 13).) Defendant maintains that these linked attachments are “necessary to make sense of the produced emails.” (Id.) Second, Defendant seeks certain attachments related to emails between Symettrica and its clearance counsel (Donaldson + Callif (“D+C”)) that Plaintiff produced on May 15, 2020 in response the April 30 Order. (Id. at 10.) Defendant also complains that Plaintiff has improperly withheld on attorney-client privilege ground a group of emails that predate the date of D+C's final Fair Use Opinion Letter and have subject lines “Drake Review” or “Superheroes & Drake.” (Id. at 19.) Defendant argues these subject lines are “the same exact subject lines as the D+C emails that Symettrica already has produced ‘pursuant to’ the April 30 Order.” (Id.) Defendant questions entries 3, 4, 9, 10, 12, 17, and 18 on Plaintiff's privilege log and refers to these documents as the “Privilege Log Emails.” (Id.) Defendant argues that Plaintiff's failure to comply with the April 30 Order “is willful” and seeks an order requiring Plaintiff to pay Defendant's “attorneys fees and costs caused by its failure including UMG's attorneys' fees incurred in conferring about and making the present motion.” (Id. at 2.) B. Plaintiff's Arguments Plaintiff contends that in seeking email attachments that reflect unreleased versions of the film and clearance logs for those unreleased versions, Defendant is “deliberately misconstruing” the April 30 Order. (Joint Stip. at 2.) Plaintiff further argues that Defendant now seeks “production of each and every one of Plaintiff's attorney-client communication,” despite the Court's conclusion that there was no wholesale waiver of the attorney client privilege between Plaintiff and its clearance counsel. (Id.) Plaintiff also argues that Defendant cannot use the April 30 Order “as a vehicle to demand documents that are categorically irrelevant to any claims or defenses at issue in this action.” (Id. at 3.) *3 Plaintiff argues that it has “produced all documents sufficient to reflect the factual and legal underpinnings of the Fair Use Opinion Letter, including 17 pages of otherwise privileged email communications between Plaintiff Symettrica and its counsel, wherein Plaintiff, the producer of the Documentary, provides additional context and purpose underpinning the use of some of the clips for its counsel's further consideration.” (Id at 4.) Plaintiff acknowledges that it “did not produce fair use clearance logs for different prior versions of the final Documentary that were never released to the public,” and argues that “rough cut versions of the Documentary, which were never distributed to the public, including clearance logs associated therewith, are wholly unrelated to each and every affirmative claim and affirmative defense in this matter.” (Id. at 14.) Plaintiff contends that Defendant has deliberately misconstrued the April 30 Order and insists Plaintiff has fully complied with the April 30 Order. (Id. at 28; see also Plaintiff's Supp. Mem. at 3 [Dkt. No. 66].) LEGAL STANDARD Rule 26 permits discovery concerning any nonprivileged matter that is relevant to any party's claim or defense and is proportional to the needs of the case. FED. R. CIV. P. 26(b)(1). Rule 26(b)(1) identifies six factors to be considered when determining if the proportionality requirement has been met, namely, the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to the 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. Relevant information need not be admissible to be discoverable. Id. Federal Rule of Civil Procedure 37 provides that “[a] party seeking discovery may move for an order compelling an answer, designation, production, or inspection.” FED. R. CIV. P. 37(a)(3). District courts have broad discretion in controlling discovery. See Hallett v. Morgan, 296 F.3d 732, 751 (9th Cir. 2002). When considering a motion to compel, the Court has similarly broad discretion in determining relevancy for discovery purposes. Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 635 (9th Cir. 2005) (citing Hallett, 296 F.3d at 751). In resolving discovery disputes, the court may exercise its discretion in “determining the relevance of discovery requests, assessing oppressiveness, and weighing those facts in deciding whether discovery should be compelled.” Unilin Beheer B.V. v. NSL Trading Corp, Case No. CV 14- 2210-BRO (SSx), 2015 WL 12698382, at *4 (C.D. Cal. Feb. 27, 2015) (citing Favale v. Roman Catholic Diocese of Bridgeport, 235 F.R.D. 553, 558 (D. Conn. 2006) (internal quotation marks omitted)). DISCUSSION Plaintiff has withheld from its production in response to the April 30 Order certain email attachments and privilege log items on two grounds: one based on attorney-client privilege, the other on relevance. First, Plaintiff asserts that it has no obligation to produce attorney-client privileged communications beyond the “17 pages of otherwise privileged email communications between Plaintiff Symettrica and its counsel, wherein Plaintiff, the producer of the Documentary, provides additional context and purpose underpinning the use of some of the clips for its counsel's further consideration.” (Joint Stip. at 4.) According to Plaintiff, Defendant's Motion “improperly seeks the production of each and every one of Plaintiff's attorney-client communications, as if [there] was in fact a wholesale waiver of the attorney client privilege.” (Id. at 2.) Second, Plaintiff argues that it has no obligation under the April 30 Order to produce email attachments, including “video clips of prior unreleased versions of the Documentary that were not analyzed in the Fair Use Opinion Letter” and that are, therefore, wholly irrelevant to the instant litigation. (Id. at 4.) The Court addresses each of these arguments in turn. A. Disputed Documents on Plaintiff's Privilege Log *4 Where, as here, a lawsuit is brought under federal statutes, the existence and scope of an asserted privilege are governed by federal law. Religious Tech. Ctr. v. Wollersheim, 971 F.2d 364, 367 n.10 (9th Cir. 1992) (per curiam) (“In federal question cases ... the law of privilege is governed by the principles of the common law as they may be interpreted by the courts of the United States in the light of reason and experience.” (internal quotation marks and citation omitted)). The Ninth Circuit has held that “[t]he party asserting an evidentiary privilege has the burden to demonstrate that the privilege applies to the information in question.” Tornay v. United States, 840 F.2d 1424, 1426 (9th Cir. 1988). The attorney-client privilege applies when: (1) legal advice is sought (2) from a legal professional acting in his/her capacity as such, and (3) the communications relate to that purpose (4) are made in confidence (5) by the client. Griffith v. Davis, 161 F.R.D. 687, 694 (C.D. Cal. 1995) (citing Admiral Ins. v. U.S. Dist. Court, 881 F.2d 1486, 1492 (9th Cir. 1989). The privilege protects only those disclosures, necessary to obtain informed legal advice, which might not have been obtained absent the privilege. Fisher v. U.S., 425 U.S. 391, 402 (1976). As an initial matter, Plaintiff is correct that the April 30 Order explicitly declined to find a wholesale waiver of the attorney-client privilege as to Plaintiff's communications with its clearance counsel, D+C. (See Dkt. No. 55.) The April 30 Order also did not require Plaintiff to produce every document exchanged with D+C. Thus, to the extent Plaintiff has withheld communications with its clearance counsel that do not constitute “factual underpinnings” of the Fair Use Opinion Letter that is at issue in this lawsuit as specifically referenced in the Complaint, those communications between Plaintiff and D+C remain privileged and need not be produced. However, withheld privileged communications must be identified on Plaintiff's privilege log. Defendant argues that Plaintiff's May 15 Production “failed to include other documents catalogued on Symettrica's privilege log that, based on the available information, also apparently would be subject to and required to be produced under the April 30 Order.” (Joint Stip. at 10.) Specifically, Defendant points to items 3, 4, 9, 10, 12, 17, and 18 on Plaintiff's privilege log. (Id.) Defendant argues that Plaintiff “should be ordered to produce those other emails to UMG or, at the very least, provide them for the Court's in camera review[.]” (Id. at 2.) On the record presented here, the Court cannot determine whether any of Plaintiff's privilege log entries that Defendant complains about should in fact have been produced in response to the April 30 Order. Accordingly, the Court defers ruling on Defendant's Motion regarding the privilege log documents until it has had an opportunity to conduct an in camera review of the disputed privilege log entries 3, 4, 9, 10, 12, 17, and 18. See Fed. Sav. & Loan Ins. Corp. v. Ferm, 909 F.2d 372, 374 (9th Cir. 1990) (approving in camera review “where the review is necessary to determine whether the communications themselves are privileged.” (citing United States v. Zolin, 491 U.S. 554 (1989)). B. Email Attachments Must be Produced Rule 34, which governs the production of documents, specifically requires that a party must produce electronically stored “documents as they are kept in the ordinary course of business[.]” FED. R. CIV. P. 34(b)(2)(E). “The Federal Rules of Evidence favor the complete production of non-privileged evidence if some portion of the evidence is deemed responsive.” Karnoski v. Trump, 2020 WL 2736961, at *1 (W.D. Wash. Mar. 4, 2020) (citing FED. R. EVID. 106 (emphasis in original)). *5 Courts in this Circuit have long recognized that an email and its attachment comprise “one document or message unit” and consistently require a producing party to “re-link the emails with the attachments or re-produce the emails with their attachments.” See, e.g. Pom Wonderful LLC v. Coca-Cola Co., Case No. CV 08-6237-SJO (FMOx), 2009 WL 10655335, at *3 (C.D. Cal. Nov. 30, 2009) (granting motion to compel production of missing email attachments); see also Virco Mfg. Corp. v. Hertz Furniture Sys., Case No. CV 13-2205-JAK (JCx), 2014 WL 12591482, at *5 (C.D. Cal. Jan. 21, 21014) (“This Court agrees with those courts which have held that emails produced in discovery should be accompanied by their attachments or that the attachments should be produced along with information sufficient to enable a receiving party to identify the emails to which the attachment corresponds.”). These principles necessarily guide the court's analysis below. Plaintiff argues that it is entitled to withhold certain email attachments, particularly those concerning prior unreleased versions of the documentary film and the related clearance logs, because the attachments are wholly irrelevant to the claims and defenses at issue in the case. (Joint Stip. at 3, 14.) Only one version of the film is at issue in the case—the version released and distributed to the various media platforms that received the alleged “Takedown Notice” from UMG. Defendant acknowledges that for one of the emails that referenced a password-protected video described as a “final cut,” “Symettrica has since provided a password to access the third video, which is still available and appears to be the same as the ‘final’ version of the Infringing Film already in UMG's possession.” (Id. at 9 n.4.) Plaintiff argues that some of the missing email attachments include prior unreleased versions of the Documentary and “related logs.” (Joint Stip. at 4.) Plaintiff states that “there is only one version of that Documentary that has ever been publicly released” and the Fair Use Opinion Letter pertained solely to “that one version of the Documentary.” (Joint Stip. at 5 (emphasis in original).) The scope of discovery is broader than admissibility for trial. FED. R. CIV. P. 26(b)(2). The cases that Plaintiff cites in support of the argument that only the one final version of the film is relevant to the question of infringement, all address the merits of the underlying infringement claim, not the propriety in discovery of a responding party unilaterally withholding email attachments on the ground that the attachments are not relevant. (Joint Stip. at 26; and cases cited therein: See v. Durang, 711 F.2d 141, 142 (9th Cir. 1983) (appeal after motion for summary judgment); Chase-Riboud v. Dreamworks, Inc., 987 F. Supp. 1222, 1227, n.5 (C.D. Cal. 1997) (discussing likelihood of success on the merits in denying motion for preliminary injunction); Walker v. Time Life Films, Inc., 615 F.Supp. 430, 436 (S.D.N.Y. 1985) (motion for summary judgment).)[4] To the extent email attachments concerning unreleased versions of the Documentary are indeed wholly irrelevant to the infringement determination, such information can properly be excluded from trial by motions in limine. Plaintiff is correct that the April 30 Order required production of the clearance log created in connection with the released version of the Documentary that is the subject of the litigation. However, the April 30 Order did not vitiate Plaintiff's obligation to otherwise produce complete versions of any responsive emails it was also required to produce in compliance with that order. As one court has emphasized “[email] attachments can only be fully understood and evaluated when read in the context of the emails to which they are attached. That is the way they were sent and they way they were received. It is also the way in which they should be produced.” Families for Freedom v. U.S. Customs & Border Prot., 2011 WL 4599592, at *5 (S.D.N.Y Sept. 30, 2011). Thus, well settled authorities from this Circuit and beyond require that, here, where Plaintiff produced responsive emails as required by the April 30 Order, it must also produce any linked attachments, notwithstanding its contentions that those attachments maybe irrelevant. *6 Accordingly, the Motion is GRANTED as to Defendant's request for an order compelling Plaintiff to produce responsive emails with the related attachments. If Plaintiff contends any such attachments are privileged, as opposed to simply irrelevant, Plaintiff must identify any such attachments on a supplemental privilege log. C. An Award of Defendant's Fees and Expenses is Not Warranted Defendant seeks sanctions against Plaintiff under Rule 37(b)(2)(A) and (C) for Plaintiff's alleged failure to comply with the Court's April 30 Order. (Joint Stip. at 20.) Having thoroughly reviewed the parties' briefing and related exhibits, the Court concludes that sanctions are not warranted against Plaintiff. Based on the sensitivity of the privilege issues raised in the Motion and given Plaintiff's legitimate concerns not to inadvertently take actions that might be construed as a waiver of its attorney-client privilege, Plaintiff's opposition to Defendant's demands for further production was not substantially unjustified. Further, while Plaintiff's withholding of email attachments was legally incorrect, the Court does not find the conduct a willful violation of its April 30 Order. Accordingly, Defendant's request for an order requiring Plaintiff to pay Defendant's attorneys' fees and expenses is DENIED. CONCLUSION Defendant's Motion to Compel is GRANTED in part and DEFERRED in part as set forth above. No later than July 24, 2020, Plaintiff shall: (1) produce non-privileged email attachments originally linked to responsive emails produced in Plaintiff's May 15, 2020 production of documents in compliance with the Court's April 30, 2020 Order; (2) serve a Supplemental Privilege Log including any email attachments withheld as privileged; (3) deliver to the Court for in camera review: (1) a copy of its privilege log; (2) complete copies of the documents identified as privilege log entries 3, 4, 9, 10, 12, 17, and 18. The documents may be delivered via hardcopy or electronic means. Defendant's request for sanctions against Plaintiff is DENIED. Footnotes [1] At the July 1, 2020 hearing, the Court also heard oral argument on Plaintiff Symettrica Entertainment Ltd.'s (“Plaintiff”) Motion to Compel. (Dkt. No. 56.) The resolution of Plaintiff's motion to compel is the subject of a separate order. (See Dkt. No. 71.) [2] On July 15, 2020, Plaintiff filed a “Notice of Clarification” related to the instant motion in which Plaintiff argues that Defendant failed to meet and confer consistent with the Court's Order re: Plaintiff's Motion to Compel Further Responses and Documents [DE 71]. (Dkt. No. 72.) On July 16, 2020, Defendant filed a response to the Notice of Clarification. (Dkt. No. 73.) The Court neither invited nor authorized additional briefing on the Motion after taking the matter under submission. More importantly, Plaintiff did not raise any argument regarding Defendant's failure to satisfy the meet and confer requirement in the either Joint Stipulation or during oral argument on the Motion. Furthermore, the Court notes that the Joint Stipulation here includes a certification signed by counsel for Defendant, as required under Local Rule 37-1, stating: “This Motion is made following the conference of counsel, which took place between May 18 and May 21, 2020.” (Joint Stip. at 1.) In its portion of the Joint Stipulation, Plaintiff did not object to or correct the certification. Consequently, the Court deems Plaintiff's argument waived as to this issue and disregards the untimely filings. See Haggerty v. Fed. Ins. Co., 32 F. App'x 845, 849 (9th Cir. 2002) (arguments not raised by party in opening brief deemed waived). [3] Defendant inexplicably, and without citation to authority, asserts that the “Conclusion of the April 30 Order ... is separate from and outside the context of the substance and reasoning of the Court's holding.” (Joint Stip. at 18.) [4] The Court was unable to locate the decision that Plaintiff cites as “Marshall v. Yates, 223 U.S.P.O., 453, 452 n.2 (C.D. Cal. 1983).” (See Joint Stip. at 26.)