Pharrell - Williams and Thicke v. Gaye - Order On Motion To Compel

UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES GENERAL

Case No.

LA CV13-06004 J AK (AGRx) Date

October 30, 2014

Title

Pharrell Williams, et al. v. Bridgeport Music, Inc., et al.

CV-90 (10/08) CIVIL MINUTES - GENERAL Page 1 of 7

Present: The Honorable

J OHN A. KRONSTADT, UNITED STATES DISTRICT J UDGE

Andrea Keifer Not Reported

Deputy Clerk

Court Reporter / Recorder

Attorneys Present for Plaintiffs: Attorneys Present for Defendants:

Not Present Not Present

Proceedings:

(IN CHAMBERS) ORDER RE DEFENDANTS AND COUNTERCLAIMANTS
FRANKIE CHRISTIAN GAYE AND NONA MARVISA GAYE'S MOTION TO
REVIEW THE MAGISTRATE JUDGE'S ORDER RE PLAINTIFF'S MOTION
TO COMPEL FURTHER RESPONSES (DKTS. 83, 88)

I. Introduction

Pharrell Williams, Robin Thicke, and Clifford Harris, J r. (Plaintiffs) composed the hit song Blurred
Lines. Compl., Dkt. 1, 6. Frankie Christian Gaye, Nona Marvisa Gaye, and Marvin Gaye III
(Defendants) claim an ownership interest in two compositions by Marvin Gaye -- Got to Give It Up
and After the Dance. Answer of Frankie Christian Gaye and Nona Marvisa Gaye, Dkt. 12, 11;
Answer of Marvin Gaye III, Dkt. 35, 11. On August 15, 2013, Plaintiffs filed this action seeking a
finding under the Declaratory J udgment Act, 28 U.S.C. 2201, that Blurred Lines does not infringe on
the copyright in Got to Give It Up or otherwise violate Defendants rights. Compl., Dkt. 1 at 4, p. 6.
Plaintiffs also sought costs and attorneys fees, and such other and further relief as the court deemed
just and proper. Id. On October 30, 2013, Nona Marvisa Gaye and Frankie Christian Gaye
(Counterclaimants) filed several counterclaims. Counterclaims, Dkt. 14.
1

The first counterclaim alleges that Plaintiffs, Star Trak Entertainment, Interscope Records, UMG
Recordings, Inc., and Universal Music Distribution infringed the copyright to Got to Give It Up through
their involvement in the recording, reproduction, performance, or sale of Blurred Lines. Id. 72-91.
The second counterclaim alleges that Thicke, Paula Patton, Star Trak, Geffen Records, UMG and
Universal Music Distribution, all of whom were involved in the recording, reproduction, performance, or
sale of the Thicke song Love After War, infringed the copyright to After the Dance. Id. 92-112.
The remaining counterclaims concern Sony/ATV Music Publishing Acquisition, Inc., and its subsidiaries
EMI April Music, Inc. and J obete Music Co., Inc. (collectively, EMI), which the Gaye family had
designated in a 1992 agreement as the exclusive administrator of various Marvin Gaye compositions
including Got to Give It Up and After the Dance. Id. 68-70. Counterclaimants accused EMI of
refusing to sue the other counterclaim-defendants (collectively, Counterclaim-Defendants) for their
infringements of Got to Give It Up and After the Dance, in violation of their agreement, allegedly

1
Marvin Gaye III separately filed counterclaims that are not relevant for purposes of this Order. Dkt. 36.
Case 2:13-cv-06004-JAK-AGR Document 140 Filed 10/30/14 Page 1 of 7 Page ID #:3793


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because of EMIs relationship with Williams and its financial interest in Blurred Lines. Id. 66-67.
The third, fourth, and fifth counterclaims therefore alleged breach of the covenant of good faith and fair
dealing, breach of fiduciary duty, and breach of contract, and the sixth sought rescission of the
administration agreement between Counterclaimants and EMI. Id. 113-131. EMI and
Counterclaimants reached a settlement, and on J anuary 14, 2014, the Court dismissed the claims
against EMI with prejudice pursuant to this settlement. Dkts. 57-1, 59.

On November 13, 2013, Plaintiffs served Counterclaimants with Demands for Production. Demands
No. 15 and 16 requested [a]ll letters, emails, and other writings exchanged between you and EMI that
refer or relate to whether Blurred Lines infringes Got to Give It Up, including, but not limited to, all
letters, emails, reports, draft reports, agreements, demands, responses, and all other writings, and
[a]ll letters, emails and other writings between you and any person at EMI that refer or relate to
Blurred Lines. Demands, Dkt. 69, Exh. A, Nos. 15, 16. Counterclaimants objected, claiming that
Plaintiffs demands called for privileged settlement communications. Dkt. 69, Exh. B, Nos. 15, 16.

On J une 13, 2014, Plaintiffs moved to compel production of the documents they had requested. Dkts.
69-70. On J uly 10, 2014, Magistrate J udge Rosenberg ordered Counterclaimants to submit documents
responsive to Demand Nos. 15 and 16 for in camera review so she could determine whether to compel
their production. Dkt. 80. On J uly 16, 2014, Counterclaimants moved for this Court to review J udge
Rosenbergs order as it applied to Demands No. 15 and 16. They amended their motion on J uly 21,
2014 (Motion). Dkts. 83, 88; Reply, Dkt. 113 at 3. On J uly 31, 2014, J udge Rosenberg conducted the
in camera review. Dkts. 100-101. On September 17, 2014, she issued an order granting in part
Plaintiffs motion to compel production of several documents responsive to Document Request No. 15
(the September 17 Order). Dkt. 123 at 8. On September 23, 2014, Counterclaimants filed a statement
of their remaining objections to the September 17 Order (Statement). Dkt. 127.

Pursuant to Rule 78 of the Federal Rules of Civil Procedure and Local Rule 7-15, this Motion has been
deemed appropriate for determination without oral argument. For the reasons stated in this Order, the
Motion is GRANTED IN PART. It is granted as to certain portions of Privilege Log Entry 47, and denied
in all other respects.
II. Factual and Procedural Background

A. The Gaye Familys Communications with EMI Prior to Suit Against EMI

Got to Give It Up was recorded by Marvin Gaye in 1976 and released on or about March 15, 1977 on
the album Live at the London Palladium. Counterclaims, Dkt. 14, 31. After the Dance was written,
composed, and recorded by Marvin Gaye in 1976, and released on the 1976 album I Want You. Id.
47. Counterclaimants state that ownership of each song reverted to the Gaye family by operation of
law after Marvin Gayes death in 1984. Id. 32, 49.

In 1992, Counterclaimants entered into an administration agreement with EMI, which they modified in
1996 (Administration Agreement). Id. 68-69. The Administration Agreement engaged EMI as the
exclusive administrator of Marvin Gaye compositions including Got to Give It Up and After the
Dance. Id. 68. The Agreement contains a Power of Attorney which Counterclaimants allege reads


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as follows:

You hereby irrevocably authorize, empower and appoint Publisher your true and lawful
attorney during the Term to administer the Marvin Gaye Interest in each Composition in
the Territory to initiate and compromise any claim or action against infringers of
Publishers and/or your rights in the Compositions

Id. 69. However, Counterclaimants state that the Gaye family retained substantial beneficial interests
in the compositions. Id. 70.

Blurred Lines was released in or about March 2013. Compl., Dkt. 1, 6. Sony/ATV, the company that
administers the EMI April and J obete catalogs, is the co-publisher and administrator for Plaintiff
Williams, one of the composers of Blurred Lines. Answer to Counterclaims, Dkt. 49, 23. In or about
J uly 2013, J anis Gaye, the mother of Frankie Christian Gaye and Nona Marvisa Gaye, contacted EMI.
She advised it that the Gaye family wanted to assert legal claims with respect to Blurred Lines. Dep.
of Dag Sandsmark (Sandsmark Dep.), Dkt. 104, Exh. A at 16. Dag Sandsmark, an executive in the
business and legal affairs department of Sony/ATV, was contacted by a colleague and asked to
investigate J anis Gayes claims. Id. at 5, 16-18. Sandsmarks job duties included investigating whether
songs in the companys catalog had been infringed by works published by others or released by other
artists. Prior to Gayes inquiry, he states that he had independently listened to Blurred Lines and Got
to Give It Up multiple times and concluded that the similarity between them was not great enough to
warrant the pursuit of a potential claim. Id. at 9, 11-14. In J uly 2013, Sandsmark spoke with Gaye, but
did not inform her of his independent investigation. He states that he decided not to so because she
was an important client. Id. at 17-18.

Sandsmark recommended that Gaye consult a musicologist. Id. at 18. He says that he recommended
Larry Ferrara. He adds that Gaye independently contacted Ferrara and had him write a report, but did
not share the report with EMI. Id. at 19-21. Counsel for Gaye said it supported a claim. Id. at 28. EMI
contacted another musicologist, Tony Ricigliano, who informed EMI that he had already been hired by
Plaintiffs and could not investigate the claim. Dep. of Bruce Scavuzzo (Scavuzzo Dep.), Dkt. 104,
Exh. B at 9. Finally, EMI retained musicologist Peter Oxendale, who wrote a report comparing Blurred
Lines and Got to Give It Up (the Oxendale Report). Id. at 10. Although EMI has asserted that the
Oxendale Report is confidential and has not produced it in this litigation, EMI declined to pursue the
claim after reviewing the Report. Id. at 10-12. According to a Sony executive, EMI already had taken
the position that the claim lacked merit prior to their receipt of the Oxendale Report, and that the Report
did not change their opinion. Id. at 13. Counsel for EMI states that he informed representatives of the
Gaye family that EMI could not and would not pursue any infringement claims related to Blurred Lines,
and that doing so would violate Federal Rule of Civil Procedure 11. Dep. of Donald Zakarin (Zakarin
Dep.), Dkt. 104, Exh. C at 13.

B. Counterclaimants Suit Against and Settlement with EMI

On October 30, 2013, the counterclaims were filed. They allege that the Counterclaim-Defendants had
infringed Got to Give It Up, After the Dance, or both, and that EMI had breached its contractual and
fiduciary duties to Counterclaimants by refusing to initiate litigation against the Counterclaim-


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Defendants. Counterclaims, Dkt. 14. Counterclaimants also alleged that EMI refused to support this
action or pursue it, refused to assign to the Gaye Family, to the extent necessary, the right to bring this
action, resorted to stonewalling and threats . . . [and advised Counterclaimants] to drop the matter. Id.
67.

Counsel for EMI asserts that Counterclaimants and EMI started really intense [settlement] discussions
in November or early December of 2013, and drafted multiple preliminary versions of a settlement
agreement. Zakarin Dep., Dkt. 104, Exh. C at 16. On December 6, 2013, the Parties to this action
jointly filed a Rule 16(b) Report with this Court, Dkt. 48. On December 16, 2013, the Parties appeared
for a scheduling conference. Dkt. 54. At that conference, Counterclaimants and EMI informed the Court
that they had reached a tentative settlement of the counterclaim against EMI, subject to formal
documentation. Busch Decl., Dkt. 56-1, 4. On J anuary 13, 2014, Counterclaimants moved voluntarily
to dismiss with prejudice all claims asserted against EMI in their counterclaim. On J anuary 14, the
Court granted their motion. Dkts. 57, 59.

C. Plaintiffs Motion to Compel

On November 13, 2013, Plaintiffs served Counterclaimants with Demands for Production. Dkt. 69,
Exh. A. Demand for Production No. 15 requested [a]ll letters, emails, and other writings exchanged
between you and EMI that refer or relate to whether Blurred Lines infringes Got to Give It Up,
including, but not limited to, all letters, emails, reports, draft reports, agreements, demands, responses,
and all other writings, and Demand for Production No. 16 requested [a]ll letters, emails and other
writings between you and any person at EMI that refer or relate to Blurred Lines. Id. Nos. 15, 16. On
J anuary 29, 2014, Counterclaimants served Plaintiffs with Revised Responses to Plaintiffs Demands.
Dkt. 69, Exh. B. Counterclaimants responses to Demands No. 15 and 16 repeated their general
objections to all of Plaintiffs Demands, and added that Counterclaimants object to this request to the
extent it calls for privileged settlement communications, and any other privileged documents including
documents privileged under the attorney work product or attorney client privileges. Id. Nos. 15, 16.

On J une 13, 2014, Plaintiffs moved to compel production of the documents it had requested in its
Demands, including those requested in Demands No. 15 and 16. Dkts. 69-70. Specifically, Plaintiffs
sought production of the documents described by log entry numbers 1-5, 10-12, 25-26, 29-30, 36-51,
53-57, 59-60, 62-65, 67-69, 71, 73-78, and 81 on Counterclaimants privilege log. Oppn, Dkt. 104, at
11-12; Privilege Log, Dkt. 104, Exh. K. Plaintiffs stated that this evidence was relevant because it
related to alleged copyright infringement as well as whether Counterclaimants acted in bad faith. The
latter would be relevant as to Plaintiffs request for attorneys fees. Dkt. 70 at 3. Plaintiffs also argued
that the privilege raised by Counterclaimants lacked merit. Id.

On J uly 10, 2014, J udge Rosenberg issued an Order granting Plaintiffs motion to compel as to
Demands No. 15 and 16. Dkt. 80. The Order required Counterclaimants to submit for in camera review
by J uly 21, 2014 all of the Log Entries requested by Plaintiffs. The purpose of this submission was to
enable J udge Rosenberg to determine whether to compel their production. Id. at 5.

On J uly 16, 2014, Counterclaimants filed an ex parte application for an order staying J udge
Rosenbergs Order. J udge Rosenberg denied that application on J uly 18, 2014. On J uly 31, 2014, after


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receiving the Log Entries, J udge Rosenberg held an in camera hearing with only Counterclaimants
counsel present. She then held a further hearing with counsel for both parties present. Dkts. 100-101.
J udge Rosenberg thereafter took the matter under submission. Dkt. 101.

On J uly 16, 2014, Counterclaimants filed the initial version of the Motion; they amended it on J uly 21,
2014. Dkts. 83, 88. On August 29, 2014, Plaintiffs filed an Opposition. Dkt. 104. On September 8, 2014,
Counterclaimants filed a Reply. Dkt. 113.

D. Judge Rosenbergs Order

On September 17, 2014, J udge Rosenberg issued an Order granting in part Plaintiffs motion to compel
documents responsive to Demand No. 15. Dkt. 123. J udge Rosenberg ordered Counterclaimants to
produce unredacted versions of log entries 2, 11, and 12, and redacted versions of entries 1, 3, 4, 10,
25, 26, 29, 30, 38, 40, 45, 47 (Log Entries). Id. at 3, 5-7. J udge Rosenberg specified which portions of
the documents Counterclaimants could redact. She based this portion of the order on her evaluation of
the documents in light of responsiveness to Plaintiffs motion to compel, relevance to the underlying
dispute, and Counterclaimants claims of privilege. Id. at 5-7. J udge Rosenberg denied Plaintiffs motion
to compel documents responsive to Demand No. 16, which consisted of entries 5, 36, 37, 39, 41-44,
46, 48-51, 53-57, 59-60, 62-65, 67-69, 71, 73-78, and 81. Id. at 7-8. She found that to the extent this
Demand was not duplicative of No. 15, none of these items was relevant to claims or defenses in this
case. Id.

E. Counterclaimants Statement of Remaining Objections

The Motion sought review of several of discovery disputes which, according to Counterclaimants, were
no longer at issue following J udge Rosenbergs J uly rulings. Reply, Dkt. 113 at 2 (This is a case where
events overtook the review process.). J udge Rosenbergs September 17, 2014 Order granted certain
additional requests of Counterclaimants. This further narrowed the relief sought in the Motion.
Accordingly, on September 19, 2014, Counterclaimants were ordered to file the Statement, listing the
specific rulings of the September 17, 2014 Order that were still in dispute. Dkt. 124. Counterclaimants
did so on September 23, 2014. Dkt. 127. Plaintiffs filed an Opposition to the Statement on September
25, 2014. Dkt. 128.

Counterclaimants objected to the production of paragraph 4 of Log Entry 10, the second full paragraph
on page two of Log Entry 12, the last sentence of paragraph 3 on page one, the last paragraph of page
two continued onto page three and the related portion of the last sentence of the second paragraph on
page four of Log Entry 26. Dkt. 127 at 2-3. The basis for these objections was the claim that this
information was unresponsive to Plaintiffs demands. Id. Counterclaimants also objected generally to all
of the production required by the J udge Rosenbergs September 17, 2014 Order. They argued that it
included information that is unlikely to lead to the discovery of admissible information, and therefore,
further redactions should be ordered. Id. at 3. In particular, Counterclaimants objected to the
production of privilege log documents 10, 12, 26, 30, 40, 45, and 47 because they allegedly included
settlement discussions between EMI and Counterclaimants, and these do not represent the merits of
the case, and instead merely represent each partys position for an attempt to avoid litigation or
effectuate a settlement. Id. at 4. Plaintiffs contended that Counterclaimants had failed to show that this


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information was not discoverable. They added that, although its probative weight was an issue for trial,
Plaintiffs were entitled to review these documents under Rule 26. Dkt. 128 at 3-4.
III. Analysis

A. Legal Standard

Fed. R. Civ. P. 72(a) provides the standards that apply to the review by a district court of a non-
dispositive ruling by a magistrate judge. It states that [t]he district judge in the case must consider
timely objections and modify or set aside any part of the order that is clearly erroneous or contrary to
law. Fed. R. Civ. P. 72(a); 28 U.S.C. 636(b)(1)(A). A district court has the power to affirm, modify,
vacate, set aside or reverse the magistrate judges order and may remand the cause and direct the
entry of such appropriate judgment, decree or order, or require such further proceedings as may be
just under the circumstances. Crispin v. Christian Audigier, Inc., 717 F. Supp. 2d 965, 971 (C.D. Cal.
2010) (quoting 28 U.S.C. 2106).

When considering findings of fact, the district court applies the clearly erroneous standard, which is
significantly deferential, requiring a definite and firm conviction that a mistake has been committed.
Concrete Pipe & Prods. v. Constr. Laborers Pensions Trust, 508 U.S. 602, 623 (1993) (internal
quotations omitted). By contrast, legal conclusions are reviewed de novo to determine whether they are
contrary to law. See Adolph Coors Co. v. Wallace, 570 F. Supp. 202, 205 (N.D. Cal. 1983) ([t]hus,
while we may review magistral findings of fact, subject only to the clearly erroneous standard, we may
overturn any conclusions of law which contradict or ignore applicable precepts of law); Crispin, 717 F.
Supp. 2d at 971 (the contrary to law standard permits independent review of purely legal
determinations by the magistrate judge) (internal quotations omitted).

B. Application

Federal Rule of Civil Procedure 26(b) establishes the scope of discovery. It provides in relevant part:

Parties may obtain discovery regarding any nonprivileged matter that is relevant to any
party's claim or defenseincluding the existence, description, nature, custody, condition,
and location of any documents or other tangible things and the identity and location of
persons who know of any discoverable matter. For good cause, the court may order
discovery of any matter relevant to the subject matter involved in the action. Relevant
information need not be admissible at the trial if the discovery appears reasonably
calculated to lead to the discovery of admissible evidence.

Fed. R. Civ. P. 26(b). Relevance for purposes of discovery is defined very broadly, and includes
information that might reasonably assist a party in evaluating the case, preparing for trial or facilitating
settlement. Garneau v. City of Seattle, 147 F.3d 802, 812 (9th Cir.1998) (quoting Hickman v. Taylor,
329 U.S. 495, 506507 (1947)).

The Court has conducted an in camera review of the documents at issue, and has reviewed de novo
J udge Rosenbergs legal determinations concerning which of these documents are discoverable and


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responsive. The Court concludes that, with one exception, J udge Rosenbergs thorough legal analysis
was not contrary to law. It also finds that her factual determinations were not clearly erroneous.

The one exception concerns certain passages of Log Entry 47, an e-mail that memorializes a
conference of counsel. J udge Rosenberg allowed the redaction of only the last sentence of the first
paragraph on the ground that it could remotely fall within a settlement privilege. Dkt. 123 at 7.
However, several other passages of this document concern settlement discussions and are not likely to
lead to the discovery of relevant evidence. These passages are: (i) the first clause of the first sentence,
up to the comma; and (ii) the second and third sentences of paragraph 7, and all of paragraph 8 (the
text from We prefer through resolution). Counterclaimants may redact these passages. In all other
respects, J udge Rosenbergs Order is upheld and adopted.
IV. Conclusion

For the reasons stated in this Order, Counterclaimants Motion is GRANTED IN PART.
Counterclaimants may redact the following passages of Log Entry 47: (i) the first clause of the first
sentence, up to the comma; and (ii) the second and third sentences of paragraph 7 and all of paragraph
8 (the text from We prefer through resolution). The Motion is DENIED in all other respects. No later
than November 5, 2014, Counterclaimants shall produce to Plaintiffs all documents required under this
Order and J udge Rosenbergs September 17, 2014 Order.

IT IS SO ORDERED.

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