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Boehm v. Scheels All Sports, Inc.

United States District Court, W.D. Wisconsin

November 17, 2016

SCHEELS ALL SPORTS, INC., et al., Defendants.

          OPINION & ORDER

          JAMES D. PETERSON District Judge.

         Plaintiffs, sports photographers Scott Boehm and David Stluka, allege copyright infringement and related claims against numerous defendants, who are mostly sports memorabilia dealers who sell reproductions of sports photographs. Cross-motions for summary judgment were filed by plaintiffs and most defendants many months ago and these motions are, for the most part, fully briefed and under consideration. But due to numerous discovery motions, briefing on defendant Scheels All Sports, Inc.'s and defendant David Thomason's motions for summary judgment is still incomplete. Meanwhile, the January 23, 2017 trial date looms. The court will dispose of the remaining discovery motions, strike the trial date and pretrial deadlines, and conduct a telephonic scheduling conference to set a new trial date.

         A. Plaintiffs' motion to compel Scheels to produce communications

         Defendant Scheels All Sports, Inc., asserts as a defense that it obtained the sports memorabilia featuring plaintiffs' photos from three nonparties-Photo File, Inc., Fanatics, Inc., and John Paul of North Central Canvas Prints. Scheels contends that it believed these nonparties were authorized to reproduce and sell plaintiffs' photos. Now plaintiffs move to compel Scheels to produce all communications that Scheels and Scheels' counsel held with these nonparties concerning this lawsuit. Dkt. 511. Plaintiffs also ask the court to deny or stay Scheels' pending motion for summary judgment, Dkt. 458, pursuant to Federal Rule of Civil Procedure 56(d) because Scheels has not yet produced these communications to plaintiffs. Dkt. 537. The court will grant plaintiffs' motion to compel in part because the requested discovery is relevant, proportional, and not shielded by the work-product doctrine. The court will not stay or deny Scheels' motion for summary judgment, but it will allow plaintiffs to file their response to the motion after receiving this additional discovery.

         1. Background

         In a series of emails spanning several months, plaintiffs requested from Scheels various emails, invoices, and other communications with John Paul of North Central Canvas Prints and Photo File. In response to these requests, Scheels provided Paul's contact information, 44 pages of email communications between Scheels and Paul, North Central Canvas Prints' invoices, an email from a Photo File employee, the vendor agreement between Scheels and Photo File, a redacted invoice issued by AP to Photo File for the Lambeau Field image, Photo File's invoices, and a contract between Scheels and Fanatics.

         Unsatisfied with the documents Scheels provided, plaintiffs subpoenaed Paul and received some additional emails between Scheels and Paul, but not the attachments or some of the emails plaintiffs wanted. Plaintiffs also subpoenaed Photo File, seeking its invoices and communications with Scheels, but Photo File was unable to locate any of these records using the information plaintiffs were able to provide it at the time. Finally, plaintiffs asked Scheels for all of its “communications with Photo File, Fanatics, or Paul related to this lawsuit” on August 10, 2016. Dkt. 663-7, at 3. Scheels objected, arguing that any unproduced communications are protected by the work-product doctrine. The next day, plaintiffs moved the court to compel Scheels to produce these documents. Dkt. 511. Scheels produced privilege logs listing 37 emails exchanged with Fanatics, 22 emails exchanged with North Central Canvas Prints, and 7 emails exchanged with Photo File, which Scheels claims are protected work product. Dkts. 627-29.

         2. Analysis

         When deciding whether to grant a motion to compel discovery, the court must consider whether the requested discovery is relevant, “proportional to the needs of the case, ” and nonprivileged. Fed.R.Civ.P. 26(b)(1). Public policy favors disclosure of relevant materials. Patterson v. Avery Dennison Corp., 281 F.3d 676, 681 (7th Cir. 2002). Scheels does not dispute that the requested discovery is relevant and proportional. But Scheels contends that it is nevertheless protected from disclosure because plaintiffs' emailed request for these communications was not a formal request under Federal Rule of Civil Procedure 34 and the requested materials are protected by the work-product doctrine. The court concludes that (1) Scheels waived its objection to the informal form of plaintiffs' request, and (2) the requested discovery, subject to one exception, is not shielded by the work-product doctrine. The court will grant plaintiffs' motion to compel discovery.

         The informal form of plaintiffs' discovery request is highly disfavored. Rule 26(g) requires that every discovery request be “signed by at least one attorney of record in the attorney's own name, ” and a party has no obligation to respond to an unsigned discovery request. And any request for production must specify the time, place, and manner of production. Fed.R.Civ.P. 34(b). The informal email requests from plaintiffs' counsel do not meet these requirements, which are not mere technicalities. Each proper discovery request entails an implicit representation by the counsel who makes it, and each imposes a duty of response by a deadline on the person who receives it. The formality of the process ensures that parties and their counsel know what they are obligated to do, and by when. The mishmash of requests in plaintiffs' email-part request for production, part interrogatory, part negotiation-risks great confusion as to what Scheels was obligated to do.

         That being said, Scheels responded to plaintiffs' requests and engaged in negotiation over the discovery dispute, so plaintiffs reasonably understood that Scheels was accepting the emails as actual discovery requests. If Scheels had objections to the informality of the requests, it should have voiced those concerns immediately and insisted on formal requests. But it did not, so the court deems Scheels' objection to the form of the requests to be waived.

         In any case, plaintiffs' informal discovery requests adequately meet the “reasonable particularity” and “reasonable notice” requirements of Rule 34: Plaintiffs requested “your client's or your firm's communications with Photo File, Fanatics, or Paul related to this lawsuit.” Dkt. 663-7, at 3. This request is reasonably particular and provides sufficient information to allow Scheels to identify responsive documents. Although plaintiffs' counsel did not propose a time, place, and manner for providing these requested communications to plaintiffs, the context of the request (an email) leads the court to find that plaintiffs' counsel asked Scheels' counsel to email the requested communications to him within 30 days. To reiterate: informal discovery requests are highly disfavored, but given that Scheels did not promptly object to the informality, the court will let it go.

         Turning now to the privilege question, most of the requested communications are not protected by the work-product doctrine. The work-product doctrine protects “documents and tangible things prepared in anticipation of litigation or for trial by or for another party or its representative.” Fed.R.Civ.P. 26(b)(3)(A). Plaintiffs concede that Scheels' counsel's communications with these three nonparties fall within the work-product doctrine (except as it applies to attachments to the Paul emails, as discussed below). But plaintiffs contend that the work-product doctrine does not protect the communications from discovery because (1) Scheels waived any privilege by voluntarily disclosing select communications with these nonparty witnesses to plaintiffs, and (2) regardless of waiver, plaintiffs are entitled to discovery of these communications under the necessity doctrine.[1]

         The work-product doctrine and its limitations are grounded in fairness. When both parties are on equal footing regarding the underlying facts of the dispute, the work-product doctrine protects attorneys' “thought processes and mental impressions against disclosure” and limits attorneys' piggybacking “on the fact-finding investigation of their more diligent counterparts.” Sandra T.E. v. S. Berwyn Sch. Dist. 100, 600 F.3d 612, 622 (7th Cir. 2009). But when, as here, the pool of ...

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