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refusing to force defendants to subpoena documents from a non-party under Fed. R. Civ. P. 45 when plaintiffs could permit access to the documents far more easily
Summary of this case from Matthew Enterprise, Inc. v. Chrysler Group LLCOpinion
ORDER (1) VACATING MOTION HEARING; AND (2) GRANTING DEFENDANTS' MOTION TO COMPEL
HOWARD R. LLOYD, Magistrate Judge.
Plaintiffs Netbula LLC ("Netbula") and Dongxiao Yue sue for alleged copyright infringement of their software products. Presently before this court is defendants' motion to compel plaintiffs to allow access to Netbula's past web pages that have been archived by the Internet Archive. The Internet Archive, a non-party to these proceedings, is a self-described "digital library" that provides access to archived websites and other artifacts. (Butler Decl. ¶ 2). Visitors to the Internet Archive may view these website records through the "Wayback Machine." (Id. ¶ 3).
The requests in dispute are defendants' Document Request Nos. 3, 6-11 and 34, which essentially seek discovery of the manner, terms, and prices on which Netbula offered licenses to its products. (See Wakefield Decl. Exs. 1 and 4).
Several years ago, plaintiffs placed a robot.txt file on their website. That file essentially instructs the Internet Archive not to copy files from Netbula's website and disables access to all of the Wayback Machine's archives of those files. (Id. ¶ 6). Defendants believe that the archived Netbula web pages contain information that could (a) prove that defendant Chordiant Software ("Chordiant") had express or implied licenses to use Netbula's software; and (b) rebut plaintiffs' claimed damages, which reportedly number in the millions of dollars. According to defendants, plaintiffs' damages claim is based on inflated and unsubstantiated prices that Netbula now says that it charged for licenses to its products in the past. Plaintiffs assert that they have produced posted web content, including pricing data. Defendants argue that the robot.txt file on plaintiffs' website, however, has prevented access to archived web pages that defendants say they need to prove their contentions.
Although there is no apparent dispute as to the relevance of the information sought, plaintiffs oppose defendants' motion for an order compelling them to temporarily disable the robot.txt file so that access to the archived records may be had. The matter is deemed suitable for disposition without oral argument, and the October 20, 2009 hearing is vacated. CIV. L.R. 7-1(b). Upon consideration of the moving and responding papers, this court grants the motion.
This court is unpersuaded that the instant motion should have been brought as one seeking an injunction rather than one seeking discovery. Plaintiffs have not convincingly shown that the order sought will require them to alter the substantive contents of their website. Defendants are seeking discovery of Netbula's past web pages. That falls squarely within the relief authorized by Fed.R.Civ.P. 37.
Equally unavailing are plaintiffs' arguments as to their claimed lack of legal "control" over the information sought. Under Fed.R.Civ.P. 34, a party is required to produce responsive documents within its "possession, custody or control." FED.R.CIV.P. 34(a)(1). Actual possession or legal ownership is not determinative. Instead, "federal courts have consistently held that documents are deemed to be within the possession, custody or control' for purposes of Rule 34 if the party has actual possession, custody or control, or has the legal right to obtain the documents on demand." In re Bankers Trust Co. , 61 F.3d 465, 469 (6th Cir. 1995); see also United States v. Int'l Union of Petroleum & Indus. Workers , 870 F.2d 1450, 1452 (9th Cir. 1989) ("Control is defined as the legal right to obtain documents upon demand."). "Decisions from within [the Ninth Circuit] have noted the importance of a legal right to access documents created by statute, affiliation or employment." In re Legato Sys., Inc. Sec. Litig. , 204 F.R.D. 167, 170 (N.D. Cal. 2001). "Control must be firmly placed in reality, " and the court examines whether there is actual, not theoretical, control. Int'l Union of Petroleum & Indus. Workers , 870 F.2d at 1454. Here, plaintiffs argue that they do not have exclusive contractual or statutory rights to control the Internet Archive's "archiving activities." (Opp. at 4). The issue, however, is not control over "archiving activities, " but control over access to the archived Netbula web pages. There can be no serious dispute that plaintiffs control that information. Indeed, they have unilaterally blocked access to the same.
In net effect, plaintiffs oppose the instant motion because they say that defendants could also get the information directly from the Internet Archive via a Fed.R.Civ.P. 45 subpoena. Defendants, however, have made a showing that Internet Archive could access the information - but not without considerable burden, expense and disruption to its operations (see Butler Decl. ¶ 8), whereas plaintiffs could permit access to the information in minutes and with minimal burden and expense (see Faillace Decl. ¶¶ 7-11). For their part, plaintiffs have not shown any serious harm that would result from the relief defendants seek. Nor have they convincingly demonstrated that the burden and expense of the discovery sought outweighs its likely benefit.
Accordingly, defendants' motion to compel is GRANTED. Plaintiffs shall, within three days from the entry of this order, disable the robot.txt file from its website and promptly advise defense counsel when that has been accomplished. The robot.txt file shall remain disabled for a period of two weeks to allow Chordiant to inspect and copy any relevant documents from past versions of plaintiffs' website that are available through the Internet Archive.
SO ORDERED.