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finding that sanctions and attorneys' fees were properly imposed "where . . . the party improperly issuing the subpoena refused to withdraw it, requiring the nonparty to institute a motion to quash"
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03 Civ. 1382 (RWS)
December 23, 2003
PAUL W. VERNER, ESQ., VERNER SIMON P.C., New York, NY, for Plaintiffs
DEYAN R. BRASHICH, ESQ., New York, NY, for Defendants
BARRY L. GOLDIN, ESQ., Allentown, PA, for Defendants
OPINION
Plaintiff D.M. Thomas ("Thomas") has moved (1) under Rule 65, Fed.R.Civ.P., to enjoin defendants Briarpatch Limited, L.P. ("Briarpatch") and Gerard F. Rubin ("Rubin") (the "Defendants") from communicating with third parties with respect to the rights relating to the novel The White Hotel written by Thomas, and (2) under Rule 56, Fed.R.Civ.P., for summary judgment declaring the entitlement of Thomas to the rights relating to the novel The White Hotel. Briarpatch and Rubin have cross-moved under Rules 8, 12, 13, 19 and 42, Fed.R.Civ.P., to dismiss the complaint for lack of jurisdiction and failure to state a cause of action, and to dismiss, remand or stay this action on abstention grounds, and to strike as untimely certain of the materials submitted by Thomas. Non-party Kathryn J. Donohue ("Donohue") has moved, pursuant to Fed.R.Civ.P. 45, for an order quashing the subpoena, dated May 22, 2003 and issued to her by attorney for Defendants (the "Subpoena"). Donohue further requests the imposition of sanctions on Defendants in the amount of her attorneys' fees and expenses incurred in connection with the Subpoena and this motion. As explained below, Defendants' cross-motion to dismiss is granted for failure to join an indispensable party, and Thomas's motions for preliminary injunction and summary judgment are denied. Donohue's motion to quash the subpoena is granted.
This action is the latest iteration of litigation which has spun out of control arising out of the relationship between Rubin and Robert Geisler ("Geisler") and John Roberdeau ("Roberdeau") and their joint effort to find and create theatrical productions. These actions include Night Hawk Ltd, v. Briarpatch Ltd., L.P., 263 F. Supp.2d 700 (S.D.N.Y. 2003);Briarpatch Ltd., L.P. v. Thomas, 265 F. Supp.2d 219 (S.D.N.Y. 2003);Briarpatch Ltd., L.P. v. Geisler Roberdeau, Inc., No. 99 Civ. 9623, 2002 U.S. Dist. LEXIS 20789 (S.D.N.Y. Oct. 31, 2002); Briarpatch Ltd., L.P. v. Geisler Roberdeau. Inc., 194 F. Supp.2d 246 (S.D.N.Y. 2002);Briarpatch Ltd., L.P. v. Geisler Roberdeau, Inc., 148 F. Supp.2d 321 (S.D.N.Y. 2001); Briarpatch. Ltd., L.P. v. Stage Fright. LLC, 86 F. Supp.2d 368 (S.D.N.Y. 2000); Briarpatch Ltd., L.P. v. Geisler Roberdeau, Inc., No. 99 Civ. 9623, 2000 U.S. Dist. LEXIS 2300 (S.D.N.Y. Mar. 3, 2000); Briarpatch Ltd., L.P. v. Pate, 81 F. Supp.2d 509 (S.D.N.Y. 2000). Neither court decisions, reason nor economics have brought an end to this flow of litigation. Roberdeau is now deceased.
Prior Proceedings
Certain of the prior proceedings involving Briarpatch, Rubin, Geisler and Roberdeau are referred to above and will not be further described except as may be required in the context of this action. Night Hawk Ltd. and Thomas filed this action on February 28, 2003, and it was referred to this Court as a related case. The complaint alleged that Thomas, Briarpatch and Rubin, through their attorney Barry L. Goldin ("Goldin"), possessed the copyright for Thomas's novel The White House, had granted a license to Night Hawk to enable it to mount a movie production of the novel, and that Night Hawk had taken steps toward the production with which Briarpatch and Rubin tortiously interfered. The instant motions followed shortly thereafter.
The Defendants cross-moved seeking dismissal and abstention on the basis of a pending state court action, Briarpatch Limited, L.P. and Gerard F. Rubin v. P.M. Thomas, P.M. Thomas, Ltd., Briarpatch Film Corp., Robert M. Geisler, Verner Simon, P.O. and Paul Verner, Index No. 603364/01, Supreme Court of the State of New York, County of New York (the "State Court Action"), which Briarpatch and Rubin filed on July 6, 2001 seeking a declaration concerning their rights with respect to The White Hotel and any movie production based upon it. Briarpatch Film Corp. ("BFC"), filed in bankruptcy, and on the basis of that filing, the Defendants removed the State Court Action; the bankruptcy filing was dismissed as filed in bad faith, and the State Court Action was remanded on August 14, 2002. In re Briarpatch Film Corp., 281 B.R. 820 (2002). The first amended complaint in the State Court Action, among other things, alleged a constructive trust and contempt with respect to the rights relating to The White Hotel. The constructive trust was alleged to have been determined in the first state court action which was initiated in the Supreme Court of the State of New York, County of New York, entitled Briarpatch Ltd., L.P. and Gerard F. Rubin v. Robert Geisler and John Roberdeau, Index No. 606156/99 (the "Original Action") and later consolidated under Index No. 603820/99 (the "Main Action"). After trial a judgment was entered stating that,
as of January 1, 1994 all beneficial right, title and interest of the . . . Projects reside . . . with the Partnership.
The Projects were defined in the judgment to include The White Hotel.
After the State Court Action was remanded to the state court by the Bankruptcy Court, the Defendants in this action, Briarpatch and Rubin, moved to dismiss for lack of diversity, alleging that Night Hawk was an alter ego of Geisler, a New York resident. Discovery on jurisdiction was ordered by an opinion of May 20, 2003 (the "May Opinion"). Night Hawk failed to appear, and by notice of dismissal of June 24, 2003, Night Hawk, Ltd. dismissed its action, leaving Thomas as the sole plaintiff.
Thomas's motions for preliminary injunction and summary judgment and the Defendants' cross-motions to dismiss were heard and marked fully submitted on August 13, 2003. On August 27, 2003, Donohue additionally submitted a motion to quash her subpoena. The Facts
A mound of affidavits has been submitted by the Defendants, up to a Fifth Supplemental Affidavit. Thomas has submitted a Local Rule 56.1 Statement. From these are drawn the facts which follow with contested issues noted.
The judgment of October 14, 1999 in the Main Action granted a constructive trust in the projects of the partnership, including The White Hotel.
Thomas is the author of The White Hotel and in March 1986 entered into a Motion Pictures Rights Agreement granting an option to the copyright toThe White Hotel to Geisler and Roberdeau (the "Agreement"). The Agreement provided in Paragraph 17:
REVERSION — If . . . the Purchaser shall have failed to commence principle [sic] photography on any motion picture version or television production . . . within that period which terminates on the tenth anniversary of the date of the Purchaser's exercise of the Option contained in the Option Agreement . . . then, any and all rights of any nature in and to the Work granted to the Purchaser by the Author hereunder shall revert automatically to the Author for his sole use and disposition without any further obligation of any kind to the Purchase.
In 1988 Geisler and Roberdeau conveyed their rights to Briarpatch Film Corp. ("BFC"). According to an exhibit to the Thomas complaint, the option was exercised by BFC on July 10, 1991.
According to Thomas's Local Rule 56.1 Statement, the BFC rights to The White Hotel were acquired by Monty Montgomery ("Montgomery") after a BFC default on a security agreement, and Montgomery registered the assignment of the copyright in January 1994. Samuel Myers ("Myers"), an attorney, put together a group to acquire Montgomery's rights (according to Rubin, Myers is a "straw man" for Geisler) on March 15, 1994. Myers registered the assignment of the copyright.
On July 2, 2001, the Defendants sent a notice to Thomas asserting their claim to rights to The White Hotel project. By the Book Option Agreement dated July 11, 2001, Thomas granted Night Hawk Limited an option to purchase all television, motion picture and ancillary rights related toThe White Hotel. The Book Option Agreement granted these rights during an initial option period which could be extended for two additional periods of 12 months upon the occurrence of certain events.
On January 8, 2003, counsel for Briarpatch and Rubin sent correspondence and copies of decisions relating to Geisler and Roberdeau to counsel for Night Hawk, and similar materials were sent to Andrew Birkin and his agent, with whom Night Hawk had contracted for work on thePeter Pan/The Boy Castaways Project. On January 24, 2003, letters were also sent to David Cronenberg ("Cronenberg"), with whom Night Hawk had contracted for writing and directional services in connection with The White Hotel.
Cronenberg's counsel on February 4, 2003, citing an offering memorandum of November 8, 2002 and the materials concerning Geisler and Roberdeau, advised that Cronenberg was not prepared to go forward with the project at that time.
I. The Absence of an Indispensable Party Deprives the Court of Jurisdiction
Defendants' motion to dismiss is granted as Night Hawk is an indispensable party. Under 17 U.S.C. § 501(b), "the court may require the joinder, and shall permit the intervention, of any person having or claiming an interest in the copyright." Thus, as under the Federal Rules, the court in a copyright infringement action has discretion as to whether to require joinder of a person having or claiming an interest in the copyright. Melville Nimmer David Nimmer, Nimmer on Copy on Copyright § 12.03, at 12-67 (2003). "Absent special circumstances joinder should be required in cases challenging the validity of the copyright upon which rest the rights of the person to be joined and should not be required if the only issue is whether the defendant engaged in unlawful copying." Wales Indus. Inc. v. Hasbro Bradley. Inc., 612 F. Supp. 510, (S.D.N.Y. 1985). See also Nimmer at 12-68; Whitney, Atwood, Norcross Assocs. Inc. v. The Architects Collaborative, Inc., 18 U.S.P.Q.2d 1243, 1245 (D. Mass. 1991); P D Int'l v. Halsey Pub'g Co., 672 F. Supp. 1429, 1435 (S.D. Fla. 1987).
Here, Thomas is not only alleging an infringement by Defendants, but issues are raised as to the validity of Thomas's copyright and the status of rights subsequently gained by Night Hawk. The complaint thus seeks declaratory relief in the name of and for Night Hawk. The complaint's seventh cause of action (entitled "Declaratory Judgment-Contracts-Derivative Works") expressly seeks declaratory judgment in the name and on behalf of Night Hawk against the partnership and Rubin as to rights in contracts, screenplays, production, and other rights. (Comp. ¶ 151):
(c) That Thomas licensed his copyright to his novel "The White Hotel" to Night Hawk effective July 11, 2001 and that defendants, BLLP and Rubin have no valid claim to any copyright to "The White Hotel" as . . . licensed by him to Night Hawk effective July 11, 2001. . . .
(g) That defendants, BLLP and Rubin, therefore have no valid claim to any contracts respecting . . . "The White Hotel" . . . as owned by Thomas . . . and as acquired by Night Hawk as set forth above.
(h) That defendants, BLLP and Rubin, therefore have no valid claim to any derivative work such as screenplays to be written based upon such contracts respecting . . . "The White Hotel" . . . as owned by Thomas . . . and as acquired by Night Hawk as set forth above.
(i) That defendants, BLLP and Rubin, therefore have no valid claim to any other Night Hawk productions' derivative works, screenplays, or properties as to which no ownership or copyright can be demonstrated by BLLP and Rubin to such derivative works such as screenplays to be written based upon copyrights and contracts owned by Night Hawk; and
(j) That Night Hawk and Thomas are legally entitled to produce their entertainment Projects as supported by the aforesaid ownership and licenses of the copyrights to "The White Hotel" . . . and contracts entered into in reliance upon title to copyright, without any interference, threats of suit, claim of copyright or contract or derivative work ownership or other written or oral contact being made by defendants BLLP and Rubin through communications by BLLP and Rubin . . . with persons or entities associated with the Night Hawk productions . . .
Furthermore, Briarpatch alleges that Night Hawk is Geisler's alter ego and that Geisler is under an order from the state court to treat the White Hotel Project as an asset of Briarpatch. Thus, if Night Hawk is Geisler's alter ego, it is obligated to hold the rights for the benefit of Briarpatch. Night Hawk as a licensee holding Thomas's right is thus indispensable to accomplish a resolution between the parties.
Bevan v. Columbia Broad. Sys., Inc., 292 F. Supp. 1366 (S.D.N.Y. 1968) is inapplicable here. In the Bevan case, plaintiffs entered into an agreement with Paramount, assigning to Paramount certain copyright interests in a play, including all motion picture rights. Plaintiffs sought to join Paramount as an indispensable party in a copyright infringement suit since the defendants maintained that Paramount, rather than plaintiff, was the real party in interest. Plaintiffs wanted to assert a claim against Paramount since if it is found to be the true owner of copyright interests, it failed to protect its rights, thereby damaging plaintiffs'. Id. at 1367. The court held that Paramount could not be forced to join as an indispensable party since "it is abundantly clear that plaintiffs have failed to show in [that]' in Paramount's absence complete relief cannot be accorded among those already parties." Id. at 1368. Furthermore, plaintiffs lacked standing to impose joinder in order to protect Paramount from incurring "double, multiple or otherwise inconsistent obligations." Id. at 1369.
Here, the records shows that Night Hawk as a licensee holding Thomas's right is indispensable to accomplish a resolution between the parties. This is especially apparent in light of Briarpatch's allegation that Night Hawk is Geisler's alter ego. Indeed, Night Hawk was originally a party and withdrew in order to avoid discovery. Furthermore, here Defendants, not plaintiffs, are the ones seeking to join Night Hawk as an indispensable party, and they have standing to take steps to protect themselves from incurring "double, multiple, or otherwise inconsistent obligations" from Thomas and Night Hawk under Fed.R.Civ.P. 19(a).
Night Hawk is thus an indispensable party. However, as Night Hawk has already been dismissed by this Court for failure to provide discovery as to diversity jurisdiction, this action must be dismissed, either because indispensable party Night Hawk is not present as required under Rule 19 (having been dismissed for failure to provide jurisdictional discovery), or, in the alternative, because if Night Hawk is joined, diversity jurisdiction is lacking.
II. There is Insufficient Evidence of Tortious Conduct by Defendants
Additionally, there is insufficient evidence of tortious conduct by Defendants. Thus, Thomas's motion for preliminary injunction is denied in the absence of probability of success or sufficiently serious questions on the merits, and Thomas's motion for summary judgement is likewise dismissed.
A. Preliminary Injunction Standard
Motions for preliminary injunction are governed by Fed.R.Civ.P. 65. A party "must show that it will suffer irreparable harm and either a likelihood of success on the merits or sufficiently serious questions going to the merits to make them a fair ground for litigation and balance of hardships tipping decidedly in the moving party's favor." Brenntag Int'l Chems., Inc. v. Bank of India, 175 F.3d 245, 249 (2d Cir. 1999). Here, Thomas cannot demonstrate likelihood of success or serious questions going to the merits as there is insufficient evidence of tortious conduct by Defendants. B. Summary Judgment Standard
Summary judgment is granted only if there is no genuine issue of material fact, and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); see generally 6 James Wm. Moore, et al., Moore's Federal Practice ¶ 56.15 (2d ed. 1983). The court will not try issues of fact on a motion for summary judgment, but, rather, will determine "whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52 (1986).
The moving party has the burden of showing that there are no material facts in dispute, and the court must resolve all ambiguities and draw all reasonable inferences in favor of the party opposing the motion.Bickhardt v. Ratner, 871 F. Supp. 613 (S.D.N.Y. 1994) (citing Celotex Corp. v. Catrett, 477 U.S. 317 (1986)). Thus, "[s]ummary judgment may be granted if, upon reviewing the evidence in the light most favorable to the non-movant, the court determines that there is no genuine issue of material fact and the movant is entitled to judgment as a matter of law."Richardson v. Selsky, 5 F.3d 616, 621 (2d Cir. 1993).
A material fact is one that would "affect the outcome of the suit under the governing law," and a dispute about a genuine issue of material fact occurs if the evidence is such that "a reasonable jury could return a verdict for the nonmoving party." Anderson, 477 U.S. at 248; R.B. Ventures, Ltd. v. Shane, 112 F.3d 54, 57 (2d Cir. 1997)
C. Discussion
The tort claims at issue are based on correspondence and copies of decisions, relating to Geisler and Roberdeau, that counsel for Briarpatch and Rubin sent to Night Hawk and Cronenberg, with whom Night Hawk had contracted for writing and directional services in connection with The White Hotel. Cronenberg's counsel on February 4, 2003, citing an offering memorandum of November 8, 2002 and the materials concerning Geisler and Roberdeau, advised that Cronenberg was not prepared to go forward with the project at that time. Similar materials were also sent to Andrew Birkin and his agent, with whom Night Hawk had contracted for work on thePeter Pan/The Boy Castaways Project.
Under New York law, a claim of tortious interference with an existing contract requires "proof of (1) the existence of a valid contract between plaintiff and a third party; (2) the defendant's knowledge of that contract; (3) the defendant's intentional procuring of the breach, and (4) damages." Foster v. Churchill, 87 N.Y.2d 744, 749-50 (1996); MDC Corp., Inc. v. John H. Harland Co., 228 F. Supp.2d 387, 397 (S.D.N.Y. 2002) (same); WFB Telecommunications, Inc. v. NYNEX Corp., 590 N.Y.S.2d 460, 461 (1st Dep't 1992) ("In order to state a cause of action for tortious interference with contractual relations plaintiffs must show that defendants acted intentionally and through improper means induced the breach of contract between plaintiff and a third party.").
However, "economic interest is a defense to an action for tortious interference with a contract unless there is a showing of malice or illegality." Foster, 87 N.Y.2d at 750; see also MDC Corp., 228 F. Supp.2d at 397 ("Where the defendants have an economic interest in the contract between a plaintiff and a third party, proving the elements listed above is not sufficient. Rather, under New York law, liability will be imposed only where plaintiff can make a showing of malice on the one hand or fraudulent or illegal means on the other.") (citing inter alia Inn Chu Trading Co. v. Sara Lee Corp., 810 F. Supp. 501, 505 (S.D.N.Y. 1992));Felsen v. Sol Cafe Mfg. Corp., 24 N.Y.2d 682, 687 (1969) ("A person who has a financial interest, as a stockholder, in the business of another is privileged to interfere with a contract which that other person or business had with a third person if his purpose is to protect his own interest and if he does not employ improper means.").
Here, there was an economic justification for Briarpatch and Rubin to put third parties on notice of adjudicated rights and their interests inThe White Hotel and on the Peter Pan/The Boy Castaways Projects. The state court judgment enjoined Geisler and Geisler affiliates from holding themselves out as having a right, title, or interest in the projects "since all rights, title, and interest are vested in the Partnership [Briarpatch]." The state court further issued an order requiring Geisler and his affiliates to deliver "all screenplays, agreements, . . . correspondence, . . . and other documents relating to the Projects, since they belong to and are the property of the Partnership." According to Defendants, Night Hawk is Geisler's alter ego, and they thus acted to protect their rights in the projects.
Briarpatch and Rubin additionally cite state court decisions that found Briarpatch's delivery of notices and adjudications to interested persons to be "justified" and proper in an earlier instance. Previously, after learning that Geisler and its affiliates entered into an agreement with the company Constantin relating to The White Hotel Project, Briarpatch and Rubin sent Constantin notice and a copy of prior adjudications. Geisler and its affiliates then pursued three actions against Briarpatch and Rubin for tortious interference and prima facie tort in their communications with Constantin. The New York state court dismissed "with prejudice" a claim of tortious interference brought by Geisler affiliates, stating:
[T] he attorney acting on behalf of the winding up partner on behalf of Briarpatch was within his rights, as soon as he was able to find out about this contract, to notify Constantin Video about the decisions and the orders and the judgment of Justice Tompkins in this court.
(Goldin Aff., Ex. 19 at 93.) The state court also granted summary judgment in Briarpatch's favor, explaining:
I'm saying that there is no substance to the complaint against the attorney, who was acting on behalf of his client. . . . He was doing what he was supposed to do, he protected his client's interest. There is no claim.
(Goldin Aff. Ex. 22, 10/25/02 Tr. at 133.)
Similarly here, Defendants acted to protect their economic interests in the projects. As in the Foster case, "there was no evidence that independent torts were committed, nor were respondents' actions advanced to serve some personal interest." Foster, 87 N.Y.2d at 750. Furthermore, unlike in MDC, there is no evidence of malicious action or fraudulent or illegal means employed by Defendants. See MDC Corp., 228 F. Supp.2d at 397. Defendants simply sent the parties notice of their interests in the projects and of related adjudications.
These adjudications are matters of public record in New York and Dallas.
The elements of prima facie tort are "(1) intentional infliction of harm, (2) resulting in special damages, (3) without excuse or justification, (4) by an act or series of acts that would otherwise be lawful." WFB Telecommunications. Inc., 590 N.Y.S.2d at 461 (internal quotations omitted). "Central to the cause of action for prima facie tort is that the defendant's intent have been solely to injure plaintiff, i.e., that defendant have acted from `disinterested malevolence.'" Id. Thus, the tortfeasor must act from "disinterested malevolence" solely to harm plaintiff and not for legitimate business goals. Here, Thomas has not pled any evidence of "intentional infliction of harm," and, as explained above, there is a business justification for Defendants' actions.
The elements of the tort of intentional infliction of emotional distress are: (1) extreme and outrageous conduct, (2) intent to cause, or disregard of a substantial probability of causing, severe emotional distress, (3) a causal connection between the conduct and injury, and (4) severe emotional distress. Howell v. New York Post Co., Inc., 81 N.Y.2d 115, 121, 596 N.Y.S.2d 350 353 (1993). Here, Thomas fails to allege "extreme and outrageous conduct" sufficient to sustain a claim for intentional infliction of emotional distress. Ranieri v. Lawlor, 211 A.D.2d 601, 622 N.Y.S.2d 30 (1st Dep't 1995). Although Thomas alleges that Briarpatch and Rubin maligned him, he fails to identify maligning statements and to whom they were made. Thomas also refers to his suit by Briarpatch and Rubin and to pleadings filed therein, but the filing of a complaint and related affirmations are a part of court proceedings and thus absolutely privileged and cannot be the basis of a defamation claim. Jon An Sul v. Ladds, 269 A.D.2d 162, 702 N.Y.S.2d 78 (1st Dep't 2000).
III. Donohue's Motion to Quash the Subpoena
Fed.R.Civ.P. 45(c)(3) provides that "[o]n timely motion, the court by which a subpoena was issued shall quash or modify the subpoena if it . . . subjects a person to undue burden." "Motions to compel and motions to quash a subpoena are both `entrusted to the sound discretion of the court.'" Fitch. Inc. v. UBS Painewebber, Inc., 330 F.3d 104, 108 (2d Cir. 2003) (quoting United States v. Sanders, 211 F.3d 711, 720 (2d Cir. 2000)).
Whether a subpoena imposes an "undue burden" "depends upon `such factors as relevance, the need of the party for the documents, the breadth of the document, the time period covered by it, the particularity with which the documents are described and the burden imposed." Concord Boat Corp. v. Brusnwick Corp., 169 F.R.D. 44, 49 (S.D.N.Y. 1996) (quoting United States v. IBM Corp., 83 F.R.D. 97, 104 (S.D.N.Y. 1979)). The party issuing the subpoena must demonstrate that the information sought is relevant and material to the allegations and claims at issue in the proceedings. E.g., Salvatore Studios Int'l v. Mako's Inc., No. 01 Civ. 4430, 2001 WL 913945, at *1 (S.D.N.Y. Aug. 14, 2001) ("Rule 26(b)(1) of the Federal Rules of Civil Procedure restricts discovery to matters relevant to the claims and defenses of the parties. Here, the burden is on Mako's [who issued the subpoena] to demonstrate relevance."). Additionally, "the status of a witness as a non-party to the underlying litigation `entitles [the witness] to consideration regarding expense and inconvenience.'" Concord Boat Corp., 169 F.R.D. at 49 (quoting Fed.R.Civ.P. 45(c)(2)(B)).
Here, Donohue is a non-party to the action, and there is no need for her testimony. The Subpoena pertains to information concerning Night Hawk, which is no longer a party to the case. Furthermore, Defendants issued the Subpoena while simultaneously seeking the dismissal of this action, which has, in fact, been granted. Defendants cannot use this subpoena to obtain information for use in state court proceedings.Nicholas v. Poughkeepsie Sav. Bank/FSB, No. 90 Civ. 1607, 1991 WL 113279, at *2 (S.D.N.Y. June 14, 1991) (" [W]hen the purpose of a discovery request is to gather information for use in proceedings other than the pending suit, discovery is properly denied.") (quoting Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 353 n. 17 (1978)); see also Salvatore Studios Int'l, 2001 WL 913945, at *1 (quashing a subpoena where the defendant "has failed to establish that the settlement agreement it seeks is in any way relevant to the claims or defenses raised in this action — a different lawsuit against a different party"). Thus, Defendants cannot establish that the relevance of the Subpoena outweighs the burden it imposes on non-party Donohue.
There is also some contention between the parties as to whether Defendants' opposition papers to the motion to quash were timely and whether the affidavit was properly notarized. These issues need not be delved into here as Donohue's motion to quash is granted.
Donohue is further entitled to attorney's fees. Under Fed.R.Civ.P. 45(c)(1):
A party or an attorney responsible for the issuance and service of a subpoena shall take reasonable steps to avoid imposing undue burden or expense on a person subject to that subpoena. The court on behalf of which the subpoena was issued shall enforce this duty and impose upon the party or attorney in breach of this duty an appropriate sanction, which may include, but is not limited to, lost earnings and a reasonable attorney's fee.
Sanctions are properly imposed and attorney's fees are awarded where, as here, the party improperly issuing the subpoena refused to withdraw it, requiring the non-party to institute a motion to quash. E.g., American Int'l Life Assurance Co. v. Vasquez, No. 02 Civ. 141, 2003 WL 548736, at *2-3 (S.D.N.Y. Feb. 25, 2003) (imposing sanctions for lost wages and awarding attorney's fees incurred in bringing motion to quash after attorney issuing subpoena refused to comply with non-party's request to voluntarily withdraw subpoena that sought privileged information).
Conclusion
For the reasons set forth above, Defendants' cross-motion to dismiss is granted for failure to join an indispensable party, and Thomas's motions for preliminary injunction and summary judgment are denied. Donohue's motion to quash the Subpoena and for attorney's fees is further granted.
Settle order on notice.
It is so ordered.