KOS Building Group, LLC v. R.S. Granoff Architects, P.C.
- Philip Halpern
- 7:19-cv-02918
- U.S. District Court · Southern District of New York
- 14
KOS Building Group v. R.S. Granoff Architects: Judge Smith barred the lawyer’s deposition but required document production.
KOS Building Group, LLC, its attorney Benjamin Brash, and the defendants R.S. Granoff Architects, P.C., Richard S. Granoff, and others. The ruling blocked Brash’s deposition but required production of documents and allowed the defendants to seek a limited discovery extension.
What happened
KOS Building Group, LLC sued R.S. Granoff Architects, P.C. and others over alleged copyright infringement involving a house rendering. The defendants subpoenaed KOS’s attorney, Benjamin Brash, seeking his testimony and documents about the copyright application.
The court ruled that the defendants had not shown a sufficient need to question Brash because they already had, or could obtain, relevant information from other sources. The court also found that the late stage of discovery and the risk of invading protected attorney-client communications and litigation materials weighed against the deposition. But KOS did not show enough grounds to block the subpoena’s document requests.
Judge Lisa Margaret Smith granted KOS’s motion to quash and for a protective order as to Brash’s deposition and denied it as to the document requests. Brash was ordered to provide the requested documents within 30 days, and the defendants were allowed to seek a limited discovery extension to pursue information from other witnesses.
The detailed version
- KOS Building Group, LLC v. R.S. Granoff Architects, P.C. · No. 7:19-cv-02918
- Philip Halpern
- Apr. 24, 2020
Background
KOS Building Group, LLC alleged that R.S. Granoff Architects, P.C., Richard S. Granoff, and others infringed KOS’s copyright in a rendering of a house at 5 Fox Run Lane in Greenwich, Connecticut. KOS had obtained a copyright registration for the rendering. The defendants disputed issues concerning the copyright application, including the reported first-publication date, whether the rendering qualified as a work made for hire, and whether it was a derivative work based on the defendants’ architectural plans.
The defendants had deposed KOS’s sole member, Bobby Ben-Simon. They then served a subpoena on KOS’s attorney, Benjamin Brash, seeking his deposition and documents concerning the preparation and filing of the copyright application, supporting materials, communications with the Copyright Office, and agreements involving Victor Baran and Arkona, LLC.
Legal standard
Federal Rule of Civil Procedure 45 permits a court to quash or modify a subpoena that requires disclosure of privileged or protected material, imposes an undue burden, or seeks information outside the scope of relevant discovery. The court explained that depositions of opposing counsel are disfavored because they can disrupt the attorney-client relationship and the litigation. Applying the factors discussed by the Court of Appeals for the Second Circuit, the court considered the need for the deposition, the lawyer’s role, the risk of attorney-client privilege and work-product issues, and how much discovery had already occurred.
Analysis
The court concluded that the defendants had not shown that the requested information was uniquely known by Brash. The defendants already had information about the first-publication date from the complaint and Ben-Simon’s deposition. They could also seek information about the agreements, work-for-hire issue, and derivative-work issue from Arkona and Baran.
The court found that Brash’s role weighed against his deposition because he was KOS’s attorney and had filed the copyright application while preparing for copyright litigation. The court also found a risk that additional information from Brash could involve attorney-client privilege or the work-product doctrine, which protects materials prepared in anticipation of litigation. The fact that discovery was nearly complete, and that the defendants had not earlier pursued other sources, also weighed against allowing the deposition.
The court separately addressed the subpoena’s document requests. KOS did not adequately argue that those requests should be quashed, and therefore did not carry its burden of showing that the document requests should be blocked.
Disposition
Judge Lisa Margaret Smith granted KOS’s motion to quash and for a protective order with respect to the request to depose Brash and denied the motion with respect to the requests that Brash produce documents. Brash’s responses to the document requests were ordered within 30 days. The defendants could notify the court within seven days if they wanted a 60-day extension of discovery to seek information from Arkona or Baran. If they later believed Brash’s deposition was still necessary, they could serve a new subpoena before discovery closed, and KOS could renew its motion to quash.
Read the full 14-page opinion on CourtListener, the free public archive maintained by the Free Law Project.