John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, Slip Op., No. 12 C 1446 (N.D. Ill. Sep. 16, 2013) (Keys, Mag. J.).
Judge Keys granted in part defendant McDonnell Boehnen’s (“MBHB”) Fed. R. Civ. P. 37 motion to compel document production and interrogatory responses in this copyright infringement case involving the use of various copyrighted scientific articles. The Court previously warned that discovery could not be used as a fishing expedition, but allowed certain discovery regarding MBHB’s alleged use of the copyrighted articles in their law practice. MBHB asserts fair use, laches and estoppels as affirmative defenses.
The Court ordered production of budgetary information from plaintiff’s relevant group because the annual reports plaintiff already produced lacked information regarding operating costs, allocation of shared costs, and revenue expense drivers. Additionally, they were prepared by or with input from key witnesses.
The Court denied MBHB’s request to compel a response to an interrogatory seeking the basis for plaintiff’s statements in its complaint that plaintiff had reviewed public records and found “substantial evidence of unlicensed copying . . . .” Plaintiff had already withdrawn the claim, and making the claim could not be a basis for copyright misuse.
Tellabs Ops., Inc. v. Fijitsu, Ltd., No. 09 C 4530, Slip Op. (N.D. Ill. Feb. 13, 2014) (Cole, Mag. J.).
Judge Cole denied plaintiff/counter-defendant Tellab’s motion to expedite ruling upon Tellab’s motion to reclassify certain confidential documents or that Tellab’s executives could review the documents before a looming mediation. The Court denied the motion for several reasons:
- Tellabs should not have waited until four weeks before a mediation to complete briefing about documents that were reviewed as much as one year ago.
- With the motion noticed four days before the mediation and eight categories and hundreds of pages to review, the Court could not meaningfully consider the issues.
- The motion to expedite was the 1,185th document filed in the five-year-old case, with two prior mediations. Parties and counsel should already be well-versed in the case and ready for mediation based upon the already extensive schedule to date.
- Tellabs offers no reason it could not postpone the mediation instead of expending the Court’s limited resources.
Having denied to expedite its decision, the Court said it would attempt to decide the motion before the mediation.
Osiris Entertainment, LLC v. Does 1-38, No. 13 C 4901, Slip Op. (N.D. Ill. Aug. 20, 2013) (Tharp, J.).
Judge Tharp granted plaintiff Osiris Entertainment’s Fed. R. Civ. P 26(d) motion to take expedited discovery prior to a Rule 26 conference in order to discover the potential identities of the thirty eight Doe defendants otherwise only identified by their respective IP addresses in this copyright case involving the alleged infringement of the movie Awaken via BitTorrent.
As an initial matter, the Court sua sponte considered whether the thirty-eight Does were properly joined. Recognizing a district split, that mirrors a national split among district courts, the Court held that members of the same swarm may be joined in a single suit even if their direct participation in the swarm did not overlap in time, explaining:
As noted above, BitTorrent requires a cooperative endeavor among those who use the protocol. Every member of a swarm joins that cooperative endeavor knowing that, in addition to downloading the file, they will also facilitate the distribution of that identical file to all other members of the swarm, without regard to whether those other members were in the swarm contemporaneously or whether they joined it later. In that light, permitting joinder among non-contemporaneous swarm participants does not seem novel or extreme; the law governing joint ventures and conspiracies, for example, clearly permits plaintiffs to proceed against groups of defendants who engaged in a cooperative endeavor to facilitate an unlawful object whether or not all of the members of the group took part in all of the actions of the group and without regard to when the members joined the group.
Citations omitted. The Court did, however, note that there would be some requirement of temporal proximity because at some amount of separation the analogy would break down. But in this instance, the alleged Does were involved over a “relatively brief” period.
Having determined that joinder was proper at least at the initial stages of the case, the Court granted Osiris Entertainment’s motion to issue subpoenas aimed at identifying the Does based upon their alleged IP addresses. The Court, however, prohibited Osiris Entertainment from publishing the Doe’s alleged identities without leave of Court, noting that there was a “substantial possibility[y]” that the individuals associated with a particular IP address were not the individuals that downloaded the allegedly copyrighted material.