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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
CASE NO. 11-20427-JORDAN
DISNEY ENTERPRISES, INC.,
TWENTIETH CENTURY FOX FILM CORPORATION,
UNIVERSAL CITY STUDIOS PRODUCTIONS LLLP,
COLUMBIA PICTURES INDUSTRIES, INC., and
WARNER BROS. ENTERTAINMENT INC.,
Plaintiffs,
v.
HOTFILE CORP., ANTON TITOV, and
DOES 1-10.
Defendants.
/
PLAINTIFFS’ AND THE MPAA’S REPLY MEMORANDUM IN SUPPORT OF
MOTION TO AUTHORIZE USE OF CATEGORICAL PRIVILEGE LOGS
Defendants’ Opposition to Plaintiffs’ motion conflates two distinct issues, addressed in
two different motions, that are currently before the Court. The first, addressed by this motion,
concerns the use of a categorical privilege log to describe documents Plaintiffs withhold based
on claims of privilege and work product protection. The second, addressed by Plaintiffs’
separate Motion for a Protective Order [Docket No. 105] addresses the appropriate scope of
discovery into Plaintiffs’ pre-complaint investigations into infringement on Hotfile. While
Plaintiffs do request in that second, separate motion that the Court should limit inquiry into
irrelevant and confidential aspects of Plaintiffs’ copyright enforcement processes, Plaintiffs are
not requesting, in this motion, permission to withhold documents on their privilege logs based on
those relevance and confidentiality objections. Accordingly, contrary to Defendants’ assertion,
plaintiffs are not proposing any “novel” or “aggressive” categories of privileged documents in
this motion. They are proposing that their privilege logs identify privileged categories of
documents based on traditional application of the work product doctrine and attorney-client
privilege. Defendants have done nothing to refute Plaintiffs’ authority showing that categorical
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privilege logging is both appropriate under the federal rules of civil procedure and under the
facts of this case. Accordingly, Plaintiffs respectfully request that the Court permit categorical
privilege logging as set forth in Plaintiffs’ motion.
ARGUMENT
I. CATEGORICAL PRIVILEGE LOGS ARE NOT “DISFAVORED.”
Defendants claim without support that categorical privilege logs are “disfavored.” Opp.
at 1. But they fail to distinguish both the Advisory Committee notes to Rule 26 (which explicitly
contemplate this precise approach) as well as the host of decisions cited in Plaintiffs’ motion
authorizing the use of categorical privilege logs where, as here, the privileged documents are
voluminous and no prejudice would befall the nonproducing party. See Mot. at 2-3; see also,
e.g., SEC v. Thrasher, No. 92 Civ. 6987 (JFK), 1996 WL 125661, at *1 (S.D.N.Y. Mar. 20,
1996) (authorizing categorical privilege logs where “files in question are extremely voluminous”
because request sought “all communications between defense counsel concerning the lawsuit”);
Orbit One Comm’ns, Inc. v. Numerex Corp., 255 F.R.D. 98, 109 (S.D.N.Y. 2008) (authorizing
use of categorical privilege log where there was “a large quantity of privileged communications”
to be logged because request sought documents concerning the drafting and negotiations of the
contract at issue in the dispute).
This Court has also authorized this approach in a case where the number of privileged
documents were fewer than they are here. See Republic Servs. Inc. v. Am. Int’l Specialty Lines
Ins. Co., No. 07-21911-CIV, 2008 WL 4691836, at *3 (S.D. Fla. Oct. 21, 2008). Defendants
attempt to distinguish Republic Services by arguing that, in that case, the number of privileged
documents on a per party basis was still greater since this case involves six producing parties
rather than one. See Opp. at 4. But that is a distinction without a difference. The parties here
have agreed to address discovery on a per-side basis and not a per-party basis. That there are
multiple plaintiffs does nothing to change the unnecessary burden of preparing a document-by-
document log of over five thousand documents. See Updated Joint Scheduling Report, Docket
No. 101, at 17. Defendants’ attempt to distinguish Republic Services based upon the number of
parties ignores the underlying principle of the decision, which is that categorical privilege logs
are an appropriate approach where, as here, document-by-document itemization would be
burdensome and unnecessary. Mot. at 2-3.
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Defendants also rely on SEC v. Thrasher. That decision, however, supports the use of a
categorical privilege log where a party seeks “wholesale production of documents that are
ordinarily covered by the work-product rule.” 1996 WL 125661 at *1. That, of course, is
precisely what Defendants did here by demanding essentially every document arising out of
Plaintiffs’ pre-complaint investigation. And Defendants’ mere accusation that Plaintiffs’
proposed privilege categories are “novel” or “unconventional” does not make them so. For
example, Plaintiffs have proposed, as two of their categories, communications between outside
counsel and in-house counsel or technical experts “for the purpose of evaluating legal claims
against Defendants” or communications between in-house counsel and antipiracy
employees/consultants working under their direction for “purposes of identifying infringers for
potential enforcement action.” Mot. at 5. These categories are classic examples of documents
entitled to attorney-client privilege and work product protection. See infra Part III.
II. DEFENDANTS HAVE FAILED TO SHOW HOW THEY WOULD BE
PREJUDICED BY USE OF A CATEGORICAL PRIVILEGE LOG.
The privilege categories Plaintiffs have proposed, and the information they have agreed
to include in a privilege log, would provide sufficient information to “enable [defendants] to
assess the claim” of privilege. Fed. R. Civ. P. 26(b)(5)(A). Accordingly, Defendants are unable
to show how “the additional information to be gleaned from a more detailed log” would be of
any “material benefit … in assessing whether the privilege claim is well-grounded.” In re
Rivastigmine Patent Litig., 237 F.R.D. 69, 87 (S.D.N.Y. 2006) (quotation marks omitted).
Defendants claim that a categorical log should not be used here because there “plainly is
a dispute” about Plaintiffs’ claims of privilege and work product. See Opp. at 5. But the
information Defendants claim they need to pursue their avowed “dispute” can be obtained from a
categorical privilege log. For example, with respect to Defendants’ objection to Plaintiffs’ work
product claims, Defendants claim that they need to know which documents were created as part
of Plaintiffs’ pre-complaint investigation specifically for this litigation, and which were created
as part of Plaintiffs’ copyright enforcement efforts beyond their preparation for this immediate
litigation. See id. at 5-6.1 Although that is a false distinction with respect to the merits of work
1 In re Imperial Corp. of Am., 174 F.R.D. 475, 478 (S.D. Cal. 1997), cited by Defendants,
expressly permitted using categorical descriptions to log documents created “before the initiation
of th[e] litigation.” Id. To the extent Defendants think they need information to distinguish
documents created for this litigation as opposed to Plaintiffs’ individual enforcement efforts separate
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product protection, see infra Part III, that is not a theory Defendants need document-by-
document narratives to pursue. There is no reason properly crafted categories would not provide
Defendants with any information they claim they need to pursue this theory.2 Defendants’
theory that Plaintiffs’ pre-complaint investigation by their outside counsel and consultants to
prepare this case for litigation is different from their individual enforcement investigations for
work product purposes is a challenge to an entire category of privilege, with respect to which
“plaintiffs’ claim of work product protection … rises or falls as a unit.” See United States v.
Gericare Med. Supply, Inc., No. CIV. A. 99-0366-CB-L, 2000 WL 33156442, at *4 (S.D. Ala.
Dec. 11, 2000) (holding that “defendants have not explained how a categorical privilege log
impaired their ability to test the plaintiff’s claim of work product protection” because it was
predicated on an entire category of documents).
With respect to Defendants’ objections on the grounds of the attorney-client privilege,
Defendants claim that they require “particularized information regarding who sent and received
the communications” in order to test the claim of privilege. Opp. at 8. Defendants’ complaint
that there is an “unknown number of different parties” is without merit. Id. at 7. Plaintiffs will
be asserting privilege largely with respect to communications within the antipiracy departments
at Plaintiffs’ respective operating companies, among Plaintiffs’ in-house counsel and Plaintiffs’
outside counsel and the MPAA, and with a limited number of antipiracy vendors acting as the
agents of Plaintiffs’ in-house or outside counsel. These parties will all be identified. As
Plaintiffs have proposed, detailed information as to the parties involved in each category of
communications would be provided in the descriptions of the categories themselves – allowing
Defendants to make whatever challenges to categories of communications that they want. There
is no reason Defendants need document-by-document information about which in-house lawyer
or which antipiracy vendor sent or received each individual document.
from this specific litigation, that information can be provided through a categorical log. See infra
note 2.
2 Defendants appear to miss the point that the categories listed in Plaintiffs’ original motion were
“nonexhaustive example[s]” of the type of information Plaintiffs could provide through
categorical logs. See Mot. at 4. There is no reason why categories could not be broken into
distinct temporal subcategories, or that the parties could not meet and confer as necessary to
refine those categories as needed to address any disagreements.
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Defendants’ other arguments regarding the merits of any of the proposed categories of
privileged documents, see Opp. at 6, are premature and irrelevant to this motion. The purpose of
this motion is not for the Court to rule on the merits of Plaintiffs’ claims of privilege or
Defendants’ hypothetical attempts to overcome them. Instead, Plaintiffs have proposed a sample
of proposed categories and have made clear that they are amenable to including additional or
different information in order to provide Defendants with sufficient information so they can
evaluate the legitimacy of Plaintiffs’ assertion of privilege. If the parties, however, are not able
to reach agreement, they can then address the specifics with the court.3
III. PLAINTIFFS’ ASSERTIONS OF PRIVILEGE ARE ENTIRELY
CONVENTIONAL.
Defendants complain that a categorical log would be inappropriate in this action because
Plaintiffs are making “novel[],” “unprecedented,” and “dispute[d]” claims of privilege. Opp. at
2, 5, 8. Specifically, they argue that Plaintiffs have been asserting some form of new
investigatory “‘privilege’ [that] goes beyond conventional attorney-client privilege and attorney
work product protection” based on “‘trade secret’ or ‘confidential’ anti-piracy investigatory
techniques.” Id. at 2. That is not the case. Plaintiffs have filed a separate Motion for a Protective
Order [Docket No. 105] concerning discovery that seeks irrelevant and sensitive information, the
disclosure of which could compromise the effectiveness of Plaintiffs’ antipiracy enforcement
efforts. That motion has nothing to do with this motion and none of the privilege categories
Plaintiffs have proposed in this motion are based on relevance, trade secrets or any similar
grounds for objecting to the scope of Defendants’ requests.
There is nothing “novel” or “unprecedented” about Plaintiffs’ position on privilege and
work product. Plaintiffs’ privilege claims with respect to their pre-complaint investigations are
in fact conventional. The investigation conducted by Plaintiffs’ outside counsel and in-house
counsel to prepare this case for litigation is classic attorney work product – “documents and
tangible things . . . prepared in anticipation of litigation or for trial by or for another party or its
representative (including the other party’s attorney, consultant, surety, indemnitor, insurer, or
3 Defendants’ allusions to a counterclaim that has never been asserted, Opp. at 6 n.4, or to
theories of “waiver,” id. at 7, have no bearing on this motion. Defendants do not even attempt
assert how a categorical privilege log could possibly detract from their ability to pursue either
argument.
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agent).” Fed. R. Civ. P. 26(b)(3) (emphasis added).4 The use by counsel of consultants to aid
with the investigation does not make the privilege claim any less conventional. Defendants
make no serious claim that these materials – which drive a substantial portion of the burden of
generating a privilege log in response to Defendants’ requests – are not entitled to work product
protection.
The same is true of Plaintiffs’ individual investigations into the infringement of their
copyrights on Hotfile for purposes of enforcing their copyrights. Although Defendants complain
that some of Plaintiffs’ copyright enforcement work is performed by “non-lawyers,” Opp. at 6,
the work of those antipiracy personnel and vendors is supervised and directed by lawyers.5 It is
“clear that the work product doctrine protects materials prepared by an agent of the attorney,
provided that material was prepared in anticipation of litigation.” In re Ford Motor Co., 110
F.3d 954, 967 (3d Cir. 1997) (protecting work of in-house technical experts working with outside
consultants), abrogated on other grounds by Mohawk Indus., Inc. v. Carpenter, 130 S. Ct. 599
(2009); Mitsui Sumitomo Ins. v. Carbel, LLC, No. 09–21208–CIV, 2011 WL 2682958, at *2
(S.D. Fla. July 11, 2011) (“Work product extends beyond the lawyer’s own preparation; it may
be protected as long as it has been prepared in anticipation of litigation by any representative or
agent of the party asserting the privilege.”).
Defendants’ argument that work product protection does not apply to Plaintiffs’
individual enforcement investigations because the documents were created “in the ordinary
4 Many documents arising out of this investigation are likely to be subject to the attorney-client
privilege as well, as the attorney-client privilege protects attorney communications with a
consultant, made in confidence, for the purpose of assisting the attorney’s rendering of legal
advice to his or her client. See United States v. Kovel, 296 F.2d 918, 922 (2d Cir. 1961); see also
In re Beiter Co., 16 F.3d 929, 936 (8th Cir. 1994) (attorney-client privilege extends to
communications with independent contractor of corporation); Royal Bahamian Ass’n v. QBE Ins.
Co., No. 10-21511-CIV, 2010 WL 3637958, at *3-4 (S.D. Fla. Sept. 10, 2010) (same); In re CV
Therapeutics, Inc. Sec. Litig., No. C-03-3709 SI, 2006 WL 1699536, at *7 (N.D. Cal. June 16,
2006) (“[C]ourts have taken an expansive view of protected communications between
independent contractors and counsel where the outside consultant functions like an employee in
providing information which facilitates the obtaining of legal advice.”), clarified on
reconsideration, 2006 WL 2585038 (N.D. Cal. Aug. 30, 2006).
5 Plaintiffs’ enforcement process was previously described to the Court in the declarations of
Plaintiffs’ in-house counsel submitted in support of Plaintiffs’ Motion for a Protective Order.
See Declarations of Lance Griffin [Docket No. 106-10] ¶¶ 2-4; Betsy Zedek [Docket No. 106-
11] ¶¶ 2-5; Vicki Solmon [Docket No. 106-13] ¶¶ 2-3; and Steve Kang [Docket No. 106-12]
¶¶ 2-7.
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course of business,” is both wrong and irrelevant to this motion. Although the infringement of
Plaintiffs’ copyrights may be so pervasive that Plaintiffs’ lawyers and persons acting at their
direction are forced to regularly respond to such unlawful theft, that does not convert those legal
enforcement activities to a business function that is not privileged.6 Plaintiffs’ enforcement of
their copyrights through escalating mechanisms prior to filing an infringement complaint, such
as issuing formal notifications of infringement, are “grounded in the same set of facts that
create[] the anticipation of litigation,” i.e., the unlawful infringement of Plaintiffs’ works, and are
thus subject to conventional attorney work-product protection. In re Grand Jury Subpoena
(Mark Torf/Torf Envtl. Mgmt.), 357 F.3d 900, 909-10 (9th Cir. 2004) (documents entitled to
work product protection – even if not solely created in anticipation of litigation – because
“litigation purpose so permeates any non-litigation purpose that the two purposes cannot be
discretely separated from the factual nexus as a whole”). And critically for purposes of this
motion, Defendants’ challenge goes to an entire category of documents and can be made without
the need for a document by document privilege log.
CONCLUSION
For the reasons stated, Plaintiffs respectfully request that the Court enter an order
authorizing Plaintiffs to submit their privilege log in this action using categorical logging.
6 Likewise, notwithstanding Defendants’ efforts to manufacture some “dispute,” it is immaterial
whether “documents created prior to the litigation were created in anticipation of this litigation,”
Opp. at 5, or some other enforcement action. See In re Ford Motor Co., 110 F.3d at 967 (“The
literal language of Rule 26(b)(3) requires that the material be prepared in anticipation of some
litigation, not necessarily in anticipation of the particular litigation in which it is being sought”),
abrogated on other grounds by Mohawk Indus., Inc. v. Carpenter, 130 S. Ct. 599 (2009).
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Dated: July 27, 2011 Respectfully submitted,
By: /s/ Karen L. Stetson
Karen L. Stetson
GRAY-ROBINSON, P.A.
1221 Brickell Avenue
16th Floor
Miami, Fl 33131
Telephone: (305) 461-6880
Facsimile: (305) 461-6887
MOTION PICTURE ASSOCIATION JENNER & BLOCK LLP
OF AMERICA, INC. Steven B. Fabrizio (Pro Hac Vice)
Karen R. Thorland (Pro Hac Vice) Duane C. Pozza (Pro Hac Vice)
15301 Ventura Blvd. Luke C. Platzer (Pro Hac Vice)
Building E 1099 New York Ave., N.W.
Sherman Oaks, CA 91403 Suite 900
Phone: (818) 995-6600 Washington, DC 20001
Fax: (818) 285-4403 Telephone: (202) 639-6000
Facsimile: (202) 639-6066
Attorneys for Plaintiff
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CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on this 27th Day of July, 2011, I served the following
documents on all counsel of record on the attached service list via the Court’s CM/ECF filing
system:
Plaintiffs’ and the MPAA’s Reply Memorandum in Support of Motion to Authorize
Use of Categorical Privilege Logs
I further certify that I am admitted to the United States Court for the Southern District of Florida
and certify that this certificate of Service was executed on this date at Miami, FL.
By: /s/ Karen L. Stetson
Karen L. Stetson
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SERVICE LIST
Disney Enterprises, Inc., et al. v. Hotfile Corp. et al.
CASE NO. 11-CIV-20427-JORDAN
FARELLA BRAUN + MARTEL LLP
Anthony P. Schoenberg
tschoenberg@fbm.com
Roderick M. Thompson
rthompson@fbm.com
N. Andrew Leibnitz
aleibnitz@fbm.com
Deepak Gupta
dgupta@fbm.com
Janel Thamkul
jthamkul@fbm.com
235 Montgomery Street
San Francisco, CA 94104
Phone: 415-954-4400
Attorneys for Defendants Hotfile Corp. and
Anton Titov
BOSTON LAW GROUP, PC
Valentin Gurvits
vgurvits@bostonlawgroup.com
825 Beacon Street, Suite 20
Newton Centre, MA 02459
Phone: 617-928-1804
Attorneys for Defendants Hotfile Corp. and
Anton Titov
RASCO KLOCK
Janet T. Munn
jmunn@rascoklock.com
283 Catalonia Ave., Suite 200
Coral Gables, FL 33134
Phone: 305-476-7101
Fax: 305-476-7102
Attorney for Defendants Hotfile Corp. and
Anton Titov
Case 1:11-cv-20427-AJ Document 107 Entered on FLSD Docket 07/27/2011 Page 10 of 10
