Mitchell v. Universal Music Group Inc.
3:15-cv-00174
| W.D. Ky. | Apr 30, 2018Background
- Plaintiff Leroy Mitchell alleges Capitol Records and Andre R. Young (Dr. Dre) unlawfully sampled his composition “Star in the Ghetto” in the N.W.A. song “If It Ain’t Ruff” and sued for copyright infringement.
- Mitchell moved to compel supplemental discovery after defendants produced limited financial records (only the most recent three years), responded with boilerplate objections (proportionality, attorney‑client privilege, work product), and declined to produce a privilege log.
- Magistrate Judge granted the motion to compel: ordered broader financial discovery (pre‑2012) based on the Sixth Circuit discovery‑rule approach, required substantive responses in place of boilerplate objections, found waiver of frivolous objections, and awarded Mitchell costs.
- Defendants objected to the magistrate order on two grounds: (1) that they did not waive privilege or work‑product/proportionality objections, and (2) that they were substantially justified in opposing historical financial discovery because Petrella arguably limited recovery to a three‑year window.
- District court reviewed the magistrate order for clear error/contrary‑to‑law, upheld the waiver findings (objections were frivolous/misused), but limited the costs award: defendants will not pay costs related to the dispute over financial records from 1988–2012 because their Petrella‑based position was substantially justified.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Waiver of proportionality objections | Mitchell: defendants repeatedly used proportionality as a blanket objection and thus waived it for current discovery | Defendants: proportionality objection was reasonable, especially re: pre‑2012 financials | Court: waiver upheld — use of frivolous/substance‑free proportionality objections forfeited those objections |
| Waiver of attorney‑client privilege / work product | Mitchell: defendants asserted privilege repeatedly without producing privileged documents or a privilege log, constituting waiver | Defendants: they didn’t withhold privileged documents and thus did not waive privilege; searching pre‑2012 files may reveal privilege later | Court: waiver upheld — frivolous assertions of privilege where none existed amounted to waiver; limited future privilege assertions allowed if newly discovered privileged materials arise |
| Scope of financial discovery (pre‑2012 records) | Mitchell: discovery of financials back to 1988 is relevant given the Sixth Circuit discovery rule for latent infringement | Defendants: the Copyright Act’s 3‑year statute of limitations (and Petrella) precludes damages beyond three years, so records before 2012 are disproportionate | Court: ordered broader financial discovery under discovery‑rule rationale; but acknowledged defendants’ Petrella argument was substantially justified for purposes of costs |
| Award of costs for motion to compel | Mitchell: prevailing on motion; costs should be awarded under Rule 37 | Defendants: their opposition (esp. on statute‑of‑limitations ground tied to Petrella) was substantially justified, so costs should not be imposed | Court: mostly upheld costs award but sustained objection insofar as defendants will not pay costs relating to the dispute over pre‑2012 financial documents because their Petrella‑based position was substantially justified |
Key Cases Cited
- Petrella v. Metro‑Goldwyn‑Mayer, Inc., 134 S. Ct. 1962 (2014) (Supreme Court decision addressing laches and timing of copyright claims; defendants relied on it to argue limits on recoverable damages)
- Peterson v. Hantman, 227 F.R.D. 13 (D.D.C. 2005) (explains when a party’s position is “substantially justified” for fee shifting under discovery rules)
- Chicago Bldg. Design, P.C. v. Mongolian House, Inc., 770 F.3d 610 (7th Cir. 2014) (discusses uncertainty whether Petrella abrogates the discovery rule in copyright cases)