Free Order on Motion to Compel - District Court of Arizona - Arizona

1 2 3 4 5 6 7 8 9 10 11 12 13 Plaintiff, 14 vs. 15 16 17 18 19 20 21 22 23 24 25 26 27 28 In his motion, De Meij requested oral argument. Mot. (doc. 64) at 1. The Court denies such request. Case 2:04-cv-00341-RCB Document 128 Filed 08/16/2005 Page 1 of 8
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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA

Johan De Meij, d/b/a Amstel Music BV,

Tempe Union High School District, et al., Defendants.

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No. CIV 04-0341 PHX RCB O R D E R

On March 10, 2005 Plaintiff Johan De Meij filed a motion to compel discovery from Defendant Tempe Union High School District ("TUHSD"). (doc. 64).1 This motion was fully briefed on April 5, 2005. (doc. 81). Having carefully considered the arguments presented by the parties, the court now rules. I. Background Facts In or around 1993, De Meij, a Dutch citizen, created an original symphonic musical work entitled "The Big Apple"

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("Composition"). The copyright for the Composition was originally registered in the Netherlands in the name of De Meij and was subsequently registered in the U.S. Copyright Office in the name of De Meij d/b/a Amstel Music, BV. It is alleged that in or around the summer of 2002, the Corona Del Sol Marching Band purchased a "custom marching band arrangement" of the Composition ("Custom Arrangement"). Corona Del Sol High School ("the High School") is a school within the Tempe Union High School District ("TUHSD"). In 2002, portions of De Meij's Composition were included in the High School's marching band ("the Band") show performed during half-time at its football games. The High School allegedly began rehearsing the music, including portions of De Meij's composition, in late spring and early summer of 2002. The Band continued to rehearse the field show through the summer of 2002 and performed that field show during the fall of 2002. Based on these facts, De Meij filed this lawsuit against Defendants claiming unauthorized use, distribution and sale of his original symphonic work. De Meij attests that the creation, copying, distribution and sale of the Custom Arrangement by Mark Richardson and AAPA employee Chris Evans was unauthorized. In addition, De Meij argues that the High School band used and performed De Meij's original symphonic score of "The Big Apple" without authorization. De Meij further asserts that Defendant Great Video Productions recorded, copied, and subsequently sold the Band's performance of De Meij's song without prior authorization. II. Standard The scope of discoverable information is broad. -2Document 128 Filed 08/16/2005 "Parties may

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obtain discovery regarding any matter, not privileged, that is relevant to the claim or defense of any party. . ." 26(b)(1). Fed.R.Civ.P.

The rule specifically notes that "[r]elevant information

need not be admissible at the trial if the discovery appears reasonably calculated to lead to the discovery of admissible evidence." Id. In evaluating the scope of discoverable

information, the Court may consider whether the discovery is "unreasonably cumulative or duplicative, or is obtainable from some other source that is more convenient, less burdensome, or less expensive[.]" Fed.R.Civ.P. 26(b)(2)(i).

III. Discussion A. Motion to Compel De Meij moves, pursuant to Federal Rule of Civil Procedure 37(a), to compel TUHSD to produce what he alleges to be information discoverable under the Rule 26 standard. He seeks: (1) a list of

all compositions performed by the Band in connection with its marching band shows for the period of 1993 through 2003, including a statement as to whether or not permission was obtained for the use of each such composition; (2) a list of all compositions performed by TUHSD marching bands other than the Band in connection with each such marching bands' marching shows for the last 10 years, and state whether or not permission was obtained; (3) a detailed description of all facts surrounding the creation, acquisition and/or purchase of the arrangements of "Stonehenge" and "Canterbury Chorale," as performed by the Band in 2000; and (4) copies of invoices and purchase orders for all musical arrangements purchased on behalf of the Band and utilized for purposes of the Band's marching shows for the period 1994 through 2004. -3Document 128 Filed 08/16/2005 Exbt. A

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(doc. 64) at 3-12. He indicates that the information is relevant to the issues of "willfulness" and "fair use" in connection with his infringement claim, and relevant to his "due process" claim. Id. TUHSD generally opposes production, arguing that De Meij impermissibly seeks unrelated and irrelevant information, and that his requests are not reasonably tailored, are overly broad, and unduly burdensome. Resp. (doc. 79). First, TUHSD notes that De Meij seeks information relating to compositions other than the Composition at issue. TUHSD contends that such information is irrelevant to this case and amounts to a "fishing expedition." Id. at 4. Because it believed its conduct constituted "fair use,"2 TUHSD argues that De Meij cannot show that any alleged infringement was willful. Id. at 6. Accordingly, TUHSD contends that discovery aimed at supporting De Meij's "willful infringement" claim is inappropriate. Id. at 6. Furthermore, TUHSD contends that De Meij's request "is nothing more than an impermissible fishing expedition." Id. at 3. In support of this conclusion, TUHSD cites a letter sent in 2003 from Plaintiff's counsel that indicates he represents several other composers who may have claims against TUHSD. Id. at 3. The applicability of the "fair use" defense in this matter has not yet been determined by the Court. Since such an issue remains undecided, limiting discovery on the basis of TUHSD's assertion would be inappropriate. Parties may obtain discovery "regarding any

The "fair use" defense holds that "[p]rinted copies which have been purchased may be edited or simplified provided that the fundamental character of the work is not distorted or the lyrics, if any, altered or lyrics added if none exist." Guidelines for Educational Uses of Music § A(3), appended to 17 U.S.C. § 107. Case 2:04-cv-00341-RCB -4Document 128 Filed 08/16/2005 Page 4 of 8

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matter, not privileged, that is relevant to the claim or defense of any party. . . ." Fed. R. Civ. P. 26(b)(1). Issues, such as

whether the "fair use" defense applies in this case or whether the alleged infringement by TUHSD was willful, remain contested by the parties. Thus, discovery sought to challenge TUHSD's defense or support De Meij's "willfulness" claim is proper. Second, TUHSD asserts that such discovery is unduly burdensome because it would require "a significant and unreasonable amount of research, including conducting interviews of several current and past band directors who may or may not have the memory or information necessary from which to glean responses to Plaintiff's requests." Resp. (doc. 79) at 5. TUHSD notes that it "does not possess one nice neat document that contains the information plaintiff requests[.]" Id. In his discovery requests, De Meij seeks information on all compositions performed over the past ten years by the Band in connection with its marching band shows. Exbt. A (doc. 64) at 1. In addition, De Meij seeks the same information in regards to the five other high schools within the Tempe Union High School District that have marching band programs. Id. at 9; Resp. (doc. 79) at 5. Such requests are confined by temporal and geographic limitations. The mere fact that TUHSD may be required to conduct interviews of its own current and former employees to obtain its responses does not seem overly burdensome or unusual. TUHSD has not sufficiently shown the contested discovery to be overly burdensome. Therefore, the Court finds that De Meij's discovery requests are appropriately limited. Finally, TUHSD asks that the Court delay ruling on De Meij's -5Document 128 Filed 08/16/2005

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motion to compel until after its Motion to Dismiss Count IV, (doc. 83),3 has been ruled upon. Count IV of De Meij's Second Amended Complaint claims that TUHSD violated his due process rights. Sec. Amend. Complt. (doc. 56) at 12. De Meij argues that the requested discovery is relevant to this claim to show "an arbitrary and capricious 'policy, practice or custom' involving recidivist infringement of intellectual property rights[.]" Motion (doc. 64) at 8. In contrast, TUHSD contends that since it filed a motion to dismiss the due process claim, the relevance of the contested discovery is unclear, thus, a decision on De Meij's motion to compel should be postponed. Resp. (doc. 79) at 11. As noted previously, the information sought by De Meij in his discovery requests is relevant to challenge TUHSD "fair use" defense and to support De Meij's own claim of willful infringement. Consequently, regardless of the Court's ultimate ruling on TUHSD's motion to dismiss, the information requested by De Meij is discoverable. This lawsuit has been delayed in the past, and the Court sees no reason to further extend the duration of this litigation at this point. Therefore, the Court shall grant De Meij's motion to compel. B. Sanctions De Meij requests that sanctions be imposed against TUHSD for its objections to the above discussed discovery. Specifically, De

TUHSD originally filed a motion to dismiss count IV on February 18, 2005, in response to De Meij's First Amended Complaint. (doc. 55). However, upon De Meij's filing of a Second Amended Complaint, (doc. 56), the Court ordered that TUHSD could re-file their motion to dismiss at a later date. (doc. 68). Accordingly, TUHSD withdrew its original motion on March 16, 2005, (doc. 70), and filed a renewed motion to dismiss on April 11, 2005. (doc. 83). Case 2:04-cv-00341-RCB -6Document 128 Filed 08/16/2005 Page 6 of 8

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Meij seeks $7,250.00 in fees and costs. Reply (doc. 81) at 11. In support of his request, De Meij argues that TUHSD's response "resurrects discredited and fraudulent defenses, and presents no reasonable basis in law or fact for refusal to answer." Id. De Meij's request is governed by Federal Rule of Civil Procedure 37(a)(4)(a) which provides that: ...if the disclosure or requested discovery is provided after the motion was filed, the court shall, after affording an opportunity to be heard, require the party or deponent whose conduct necessitated the motion or the party or attorney advising such conduct or both of them to pay to the moving party the reasonable expenses incurred in making the motion, including attorney's fees, unless the court finds that the motion was filed without the movant's first making a good faith effort to obtain the disclosure or discovery without court action, or that the opposing party's nondisclosure, response, or objection was substantially justified, or that other circumstances make an award of expenses unjust. In the case at bar, TUHSD has asserted legitimate objections regarding the relevance and breadth of certain discovery requested by De Meij. Moreover, the Court finds no clear evidence that TUHSD acted in bad faith in asserting its objections. Upon consideration, the Court is unwilling to conclude that TUHSD's position was substantially unjustified. Therefore, the Court shall deny De Meij's motion for sanctions. IT IS ORDERED that De Meij's Motion to Compel (doc. 64) is GRANTED in part and DENIED in part. It is granted as to the discovery requested, but denied as to Plaintiff's request for sanctions. The other pending motions filed by the parties in this case shall be ruled upon in due course. IT IS FURTHER ORDERED that a Rule 16 Conference shall be set on October 17, 2005 at 2:30 p.m. The Court notes that the parties -7Document 128 Filed 08/16/2005

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filed a joint report and pretrial schedule with the Court Clerk on May 10, 2005. (doc. 93). In setting the Rule 16 Conference, the Court shall file a separate order that the parties will jointly prepare for the Court's use.

Dated this l6th day of August, 2005.

Copies to counsel of record

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