United States District Court, S.D. New York
Jose Luis Pelaez, Inc. and Jose Pelaez, Plaintiffs,
Scholastic, Inc., Defendant.
OPINION AND ORDER
STEWART D. AARON, UNITED STATES MAGISTRATE JUDGE:
a copyright action in which Plaintiffs, Jose Luis Pelaez,
Inc. and Jose Pelaez (“Plaintiffs”) allege that
Defendant, Scholastic, Inc. (“Defendant” or
“Scholastic”) infringed Plaintiffs'
copyrights by, inter alia, using certain photographs owned by
Plaintiffs in excess of Scholastic's limited licenses.
This Opinion and Order resolves a long-running discovery
dispute regarding the appropriate search terms and custodians
for Scholastic's search of its electronically stored
information (“ESI”). It is hereby ORDERED that
Scholastic conduct a search of its ESI as set forth below.
December 21, 2017, Plaintiffs' counsel filed a
Letter-Motion seeking to compel Scholastic to produce ESI
bearing on Plaintiffs' claim that Scholastic's
alleged infringements were willful. (ECF No. 63). Scholastic
responded on January 4, 2018 (ECF No. 65) and Plaintiffs
replied on January 8, 2018. (ECF No. 67.) Following a
telephone conference with the parties on January 9, 2018, the
Court entered an Order (the “1/9/18 Order”)
requiring (1) Plaintiffs to serve Defendants with
interrogatories in order to identify the individuals with
relevant knowledge of the issues raised in Plaintiffs'
Letter-Motion; (2) Defendant to respond to Plaintiffs'
interrogatories; and (3) the parties to meet and confer in an
attempt to narrow the search terms identified in
Plaintiffs' Letter-Motion. (ECF No. 68.) The 1/9/18 Order
also directed the parties to each select two search terms and
two custodians (for a total of four search terms and four
custodians) for Defendant to use to conduct a test search of
ESI. Based on the results of the test search, the parties
were to seek to resolve their remaining disputes regarding
the appropriate custodians and search terms. The parties
failed to resolve their dispute regarding all the issues
identified in Plaintiffs' Letter-Motion, and on February
28, 2018 submitted a joint letter to the Court regarding the
results of the test search and their positions regarding the
outstanding issues in dispute. (ECF No. 69.)
Court held another telephone conference with the parties on
March 16, 2018 and directed the parties to continue to meet
and confer to try to reach an agreement regarding custodians
and search terms. Following the conference, the Court entered
an Order the parties to submit, by March 30, 2018, a joint
letter regarding the status of discovery, including any
remaining disputes. (ECF No. 71.) The parties submitted their
joint letter on March 30, 2018 setting forth their positions
regarding a remaining dispute over search terms (ECF No. 72)
and the Court held a third telephone conference with the
parties on April 2, 2018.
scope of discovery in the federal courts is quite broad.
See Klipsch Grp., Inc. v. ePRO E-Commerce Ltd., No.
16-3637-CV, 2018 WL 542338, at *7 (2d Cir. Jan. 25, 2018)
(recognizing the “extremely broad” discovery
permitted by the Federal Rules of Civil Procedure). Under
Federal Rule of Civil Procedure 26, “parties may obtain
discovery regarding any nonprivileged matter that is relevant
to any party's claim or defense and proportional to the
needs of the case[.]” Fed.R.Civ.P. 26(b)(1).
“Although not unlimited, relevance, for the purpose of
discovery, is an extremely broad concept.” In re
Namenda Direct Purchaser Antitrust Litig., No. 15-CIV-7488
(CM) (JCF), 2017 WL 4700367, at *2 (S.D.N.Y. Oct. 19, 2017)
(internal quotation and citation omitted). As for
proportionality, Rule 26 tasks the Court to consider
“the importance of the issues at stake in the action,
the amount in controversy, the parties' relative access
to relevant information, the parties' resources, the
importance of the discovery in resolving the issues, and
whether the burden or expense of the proposed discovery
outweighs its likely benefit.” Fed.R.Civ.P. 26(b)(1).
On the whole, “[a] district court has broad latitude to
determine the scope of discovery and to manage the discovery
process.” EM Ltd. v. Republic of Argentina,
695 F.3d 201, 207 (2d Cir. 2012) (citing In re Agent Orange
Prod. Liab. Litig., 517 F.3d 76, 103 (2d Cir. 2008)).
Court finds that the discovery sought by Plaintiffs is
relevant to their allegation that Scholastic's
infringement was willful. Further, the Court has considered the
proportionality factors in ordering Defendant to conduct only
certain searches now and otherwise limiting other searches as
set forth below. The Court in exercise of its discretion
Orders as follows:
1. Scholastic shall review documents from Search
Strings 2, 6-8, 10-12, 31, 45 and 46, and produce
responsive documents to Plaintiffs.
2. Scholastic is not required to run Search Strings 24-26.
3. Scholastic shall review documents from Search String 27
for custodians Moon, Polcari, Diamond and Silver and produce
responsive documents to Plaintiffs. For custodians Paul and
Quinteros, Scholastic shall add “AND exceed*” to
the search string, as suggested by Plaintiffs, and provide an
updated hit count, broken down by custodian, to Plaintiffs
and the Court.
4. Scholastic shall provide to Plaintiffs and the Court a
breakdown by custodian of the hit count for Search Strings 1,
3-5, 9, 21-23, 34-36, 38, and 40-42.
5. Scholastic is encouraged to de-duplicate documents across
all searches in order to limit the No. of documents that it
needs to review. Prior to providing updated hit counts,
Scholastic should de-duplicate searches for which the Court
ordered a hit count by custodian, including for example,
Search Strings 40-42, which Scholastic indicated might be
returning identical results.
6. No. later than April 18, 2018, Scholastic shall file a
Letter on ECF setting forth the Court-ordered hit counts