Paisley Park Enterprises, Inc. v. Boxill

Background

The plaintiffs are Paisley Park Enterprises, Inc. and Comerica Bank & Trust, N.A., acting as personal representative for the estate of Prince Rogers Nelson. They alleged that George Ian Boxill took and released certain Prince music without the estate’s permission. They later named Sidebar Legal, PC, as a defendant, alleging that Sidebar induced, encouraged, contributed to, and materially participated in infringement of the estate’s intellectual property and interfered with a confidentiality agreement.

The plaintiffs served Sidebar with a document subpoena. They attempted service at Sidebar’s registered business address but discovered that Sidebar no longer operated there. The plaintiffs then served Matthew Wilson, Sidebar’s CEO, sole corporate officer, and registered agent, at his home address. Sidebar objected to the subpoena, produced no documents, and did not participate in the plaintiffs’ requested discussion about the objections. Sidebar also did not respond to the motion to compel or appear at the hearing. Sidebar had been found in default in the underlying case.

Court’s analysis

The court explained that discovery may cover nonprivileged information relevant to a claim or defense and proportionate to the needs of the case. Because Sidebar was in default, the court treated it as a nonparty for discovery purposes and concluded that the plaintiffs could use a document subpoena to obtain discovery from it.

The court found the requested documents relevant because they concerned the release of the Prince music at issue, work Sidebar performed for other defendants, and Deliverance, LLC, an entity created for the release of the music. The court also concluded that service on Wilson at his home address was proper under the circumstances. Wilson was Sidebar’s only corporate officer and registered agent, Sidebar no longer operated at its registered address, and Sidebar’s response showed that it received notice and had an opportunity to object.

The court nevertheless ordered the plaintiffs to serve Sidebar again, both by sending the order and subpoena by registered mail to Wilson’s home address and by serving them through the California Secretary of State under California Corporations Code section 1702. The court rejected Sidebar’s objections concerning witness fees and mileage because the subpoena required only document production, not attendance. It also rejected Sidebar’s general objections that the requests were overly broad, irrelevant, or burdensome because Sidebar did not identify specific defects or explain the claimed burden.

The court held that merely asserting attorney-client or work-product privilege was insufficient. Sidebar had to identify withheld documents in a privilege log. The court did not find a blanket waiver of privilege at that point, but allowed Sidebar to provide a proper privilege log with its subpoena responses and warned that deficiencies could result in waiver of privilege.

The court also rejected Sidebar’s objections concerning response time, costs, and inaccessible electronically stored information because Sidebar had not explained those objections or participated in the requested discussion with the plaintiffs. The court ordered Sidebar to respond fully and declined to require the plaintiffs to pay Sidebar for its time responding to the subpoena. Sidebar had provided no information showing that compliance would impose a significant expense or that it lacked the ability to bear the costs.

Ruling

The court granted in part and denied in part the plaintiffs’ motion to compel discovery. It ordered the plaintiffs to complete the two additional forms of service within 10 days of the order. It ordered Sidebar to provide complete subpoena responses within 45 days and to include a proper privilege log for any responsive documents withheld on privilege or similar grounds.

The court denied the plaintiffs’ motion for sanctions without prejudice. It gave Sidebar one more opportunity to comply, while stating that failure to do so could lead to an order requiring Sidebar to explain why it should not be held in civil contempt, monetary sanctions, and possible referral of Wilson to California state bar authorities for possible disciplinary proceedings. Magistrate Judge Tony N. Leung also stated that failure to comply with the order or prior consistent orders could result in other remedies listed in the order.