2 3

4 5

Ira P. Rothken,Esq.(StateBar. No. 160029) ROTHKEN LAW FIRM 1050NorthgateDr., Suite 520 SanRafael,CA 94903 Telephone: (415) 924-4250 Facsimile: (415) 924-2905 ~indy A. Cohn,Esq. (StateBar No. 145997) Fred yon Lohmann,Esq.(StateBar No. 192657) Robin D. Gross,Esq.(StateBar No. 200701) ELECTRONIC FRONTIER FOUNDATION 454 Shotwell Street SanFrancisco,CA 94110 Telephone:(415) 436-9333xl08 Facsimile: (415) 436-9993 Attorney for Plaintiffs Craig Newmark, ShawnHughes, Keith Ogden,Glenn Fleishmanand Phil Wright UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA

6 7
8

9
10 11

12
13

14 PARAMOUNT PICTURES CORPORATION et al. 15 16 Plaintiffs,

CaseNo.: No. CV 01-9358FMC (Ex) (Consolidated with CaseNo. CV 02-04445FMC Ex» NEWMARK PLAINTIFFS' OPPOSITIONTO ENTERTAINMENT COMPANIES' MOTION FOR REVIEW AND RECONSillERA TION OF MAGISTRATE JUDGE'S DISCOVERY ORDER
Judge: Hon. Florence-Marie Cooper Hearing Date: December 16, 2002

v.

17 REPLAYTV, INC. et al., 18 19 Defendants.

20
21 22 23 24 25

IFOR REVIEW
~

NEWMARK PLAINTIFFS' OPPOSITION TO MOTION & RECONSmERATION

-

CASE NO. CV. 01-9358FMC (Ex) & CONSOLmATED ACTIONS.

TABLE OF CONTENTS 2

I.
II. III.
IV.

INTRODUCTION
PROCEDURAL HISTORY
STANDARD OF REVIEW

3
4 5
6

ARGUMENT
A.

The Entertainment Companies havenot met their burdenof proving that the
Magistrate Judge's factual findings were clearly

7
8
9

1.

The MagistrateJudgecorrectlyrequiredthe Entertainment Companies to demonstrate specific and definite harm from possibledisclosureand a significantrisk of disclosure beforegrantinga protectiveorder, and
correctly detennined that they had failed to do

erroneous

10

2.

11
12

The MagistrateJudgecorrectly found that the relief soughtby the Entertainment Companies would impair significantly the prosecutionof the NewmarkPlaintiffs' claimsby effectively preventingthe EFF Attorneysfrom servingaslitigation counselfor the Newmark Plaintiffs in
this action

13
14 15 16 17 18 19 20 21

B.

The MagistrateJudgewas correctboth in concludingthat the Brown Bag test was not met hereand in applyingthe test only arguendo. ' The Entertainment Companies'motion improperly seeksa fresh decisionon the merits basedon different evidence than that beforethe magistrate judge 12 Even asnarrowed,the proposed restrictionwould materially prejudicethe Newmark Plaintiffs because threecategories documents the of that the Entertainment Companies still seekto withhold from the EFF Attorneys are crucial to proving the NewmarkPlaintiffs' fair usecase.
The Entertainment Companies mischaracterize the Newmark Plaintiffs' First Amendment arguments

c.
D.

so.

131
1:>

E. v.

CONCLUSION

1

22
23 24 2S

NEWMARK PLAINTIFFS' OPPOSITION TO MOTION - i-CASE NO. CV. 01-9358 FMC (Ex) FOR REVIEW & RECONSmERATION & CONSOLmATED ACTIONS.

TABLE OF AUTHORITIES

2

Cases 10, 1 passim
, 1(I

Inc., 160F.R.D. 134(W.D. Wa. 1994).. 3 Amgen,Inc. v. ElanexPharmaceutica/s, Corp., 960 F.2d 1465(9th Cir. 1992) 4 Brown Bag Softwarev. Symantec 5 6 CarpenterTechCorp. v. Armcolac, 132F.R.D. 24 (ED. Fa. 1990) Cuno,Inc., v. Pall Corp., 117F.R.D. 506 (E.D.N.Y. 1987)

7 Fluke Corp. v. Fine InstrumentsCorp., 32 U.S.P.Q.2d1789(W.D. Wa. 1994)
8
Grimes v. San Francisco, 951 F.2d 236 (9th Cir. 1991)

10,1

9 Hayesv. Woodford,301 F.3d 1054(9th Cir. 2002) 10 Phillips v. GMC, 289 F. 3d 1117(9th Cir. 2002) 1 SeattleTimesCo. v. Rhinehart,467 U.S. 20 (1984) 12 u: S. SteelCorp. v. UnitedStates,730 F.2d 1465 (Fed Cir. 1984)
13 14
IS
us. v. DentsplyIntemational, Inc., 187 F.R.D. 152 (D.Del. 1999)

,

5, 131

,

16, 1
1(1

111

Volvo

Penta

v.

Brunswick

Corp.,

187

F.R.D.

240

(ED.

Va.

Statutes
17 U.S.C. §107 28 V.S.C. §636(b)(l )(a) , , ,. 1

16 17 18 19

Rules
1~
47 C.F.R. 1.1200 to 1.1216

20 IF.R.C.P.26

1999)

5,8,

21 22
23
24

F.R.C.P.

Local

Rule

72(a)

25

3.3.1

NEWMARK PLAINTIFFS' OPPOSITION TO MOTION FOR REVIEW & RECONSmERATION

- ii - CASE NO. CV. 01-9358FMC (Ex)
& CONSOLWATED ACTIONS.

1

I.

INTRODUcnON
In seekingreconsideration the MagistrateJudge's of denial of their motion for an

2 3
4
I

extraordinaryand unprecedented protectiveorder,the Entertainment Companies urge this Court not only to deny the Newmark Plaintiffs their chosencounsel,but also to createlaw that will allow future litigants to effectively disqualify opposingcounselwho publicly disagree with them aboutissuesof public importancec The MagistrateJudgeproperly declinedthis invitation. In seekingreconsideration the Entertainment Companies makeno new legal arguments, do they questionthe legal standard nor appliedby the MagistrateJudge. Inst~ they attackthe MagistrateJudge'stwo key factual

5

6 7 8
9

10 findings: that the protectiveorderwould significantly impair litigation of the Newmark 1
12 13 14 15
I

Plaintiffs' claims by effectively preventingElectronicFrontier Foundation(EFF) attorneysfrom servingas litigation counsel;and that the Entertainment Companies failed to demonstrate had a

Irisk of disclosureof their confidentialinfonnation
But just asthe Entertainment Companies failed to demonstrate good causein supportof their original motion, they fail hereto demonstrate the MagistrateJudge'sdecisionis clearly that

16 en-oneous. this recor~ the MagistrateJudge'sdecisionis the only possibleresult. On 17
Nor doesthe Entertainment Companies'post-hocattemptto proposea different

18 protectiveorder affect the correctness the MagistrateJudge'sdecision. This improperattempt of
19 20 21 22 23 24 25
I

to gain a secondbite at the appleandreversethe MagistrateJudgefor failing to issuean order that they had not askedhim to issue,evenif cognizable, alsounsupported the record. is by Accordingly, the Entertainment Companies'motion shouldbe denied. II.

PROCEDURAL mSTORY
This disputebeganin August 2002,immediatelyupon the Court'sOrder granting

NEWMARK PLAINTIFFS' OPPOSITION TO MOTION

FORREVIEW" RECONSmERA TION

- 1- CASE CV.01-9358 NO. FMC(Ex) " CONSOLIDATED ACTIONS.

I Companies havenow prevented consolidationof this case. By instigatingit, the Entertainment

2
3
4

the EFF Attorneys from seeingthe key documents this casefor more than four monthswhile in Idocumentproductio~ interrogatories,depositions discoverymotions (with multiple exhibits and that havebeenwithheld from EFF Attorneys)have continuedunabated. Moreover,the Entertainment Companies' recitationof the proceduralbackgroundignores threekey points! First, they omit the fact that the Entertainment Companies originally soughtto

5

6

by 1 precludeaccess all NewmarkPlaintiffs' Counsel,including Mr. Rothken,to approximately

8
9

70% of all documents producedso far,3including more than 90% of the documents that the Entertainment Companies haveself-designated "restricted" or "highly restricted" underthis as

10 Court's May 29,2002 protectiveorder. Declarationof Ira Rothken,~4, 18; Declarationof
Nancy Meeks,~7-11 (Exh. A to NewmarkPlaintiffs' Supplemental Memorandum); 12 Declarationof ScottCooperdatedOctober31, 2002, Exhs.6 and 8, respectively. Second, Entertainment the Companies subsequently broadened their claim of exclusionto

13

14 precludeall of the Newmark Plaintiffs' attorneysfrom seeingevenmore documents,
approximately90% of the documents producedat the time.4 This remarkableclaim 15 representing
I

16

17 1The Entertainment Companies arguethat this Court'sconsolidation ruling "implicitly invit[ed]"
18 them to seekthis protectiveorder. Motion, Exh. 3, Exh. A to CooperDecln. at 5:19-21. This is a misreadingof the record. The Court properly concludedthat the potential for discovery 19 disputeswas no reasonto deny consolidation.Nor would suchan "invitation" relieve the Entertainment Companies the burdento showpotentialharm asrequiredby F.R.C.P.26. of 20 12 The full proceduralhistory of this matteris set out in the NewmarkPlaintiffs' portion of the 21 22 23 24 25 Joint Stipulation(CooperDecln. Exh. 2) at pages24-25,and in the Declarationof Ira Rothken datedSeptember 2002 (CooperDecln, Exh. 6), at W2-14. 30, 3 SeeDeclarationof Nancy Meeksdated October7,2002, Exh. A to Newmark Plaintiffs' Supplemental Memorandum, ~9, 12, CooperDecln. Exh. 8. 4 SeeRothkenDecln.1[7,7. The Entertainment 1 Companies'attemptto treat EFF Attorneys as "in-housecounsel"underthe existingprotective order would haveexcludedthem from viewing all documents designated "Restricted"and "Highly Restricted"by the Entertainment Companies, including the blanketdesignation the Department Justicedocuments of of and ibusinessand financial documentsas"Highly Restricted".SeeMeeksDecln.1[7-8.

NEWMARK PLAINTIFFS' OPPOSITION TO MOnON FOR REVIEW & RECONSmERATION

- 2 - CASE NO. CV. 01-9358FMC (Ex)
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1

resultedin the Newmark Plaintiffs' preparingan ex parteapplicationto this Court for relief, at which time the Entertainment Companies allowed Mr. Rothkenfull access the documents to and slightly narrowedthe numberof documents the EFF Attorneyscould not seefrom almost all that of the confidentialdocuments five categories the NewmarkPlaintiffs estimatedas to that
!

2 3
4

5
6

encompassing somewhere between78% and94% of the documents. (RothkenDecl., ~13, 18; Declarationof Cindy Cohn, CooperDecln. Exh.S, 1[20).5 Third, on this motion for reconsideration Entertainment the Companies againhave failed to provide any log or listing of the specific documents which they seekto preventEFF Attorneys
from seeing.

7
8 9

6 Basedupon the previousestimates, amountstill appears be more than the to

10 200,000pagesof the more than 708,000pagesproducedso far."

m.
12

STANDARD OF REVIEW A MagistrateJudge'sruling on a discoveryprotectiveorder is final and cannotbe set

13 asideor modified by the district court unlessthe court finds that the order is "clearly erroneous
14 15 16
17

18 19 20

21
I

22 23
24

25

SThe exactnumberof documents issuehasneverbeenclarified by the Entertainment in CompaniesThe 78% figure arisesfrom a rough calculationdoneby Mr. Rothkenbasedon a visual inspectionof the categories documents of being excludedon September 2002, together 25, with conversations with Fenwick & West LLP personnel. RothkenDecln ~18. The 94% figure is basedon a white list of Bates-stamped viewablepages notified to EFF Attorneysunderthe termsof the interim stipulationgoverningMr. Rothken'saccess, RothkenDecln ~14 and Exh.B, which the Entertainment Companies providedto EFF Attorneyson a rolling basisduring the briefing process below. This list only identified approximately6% of the pagesproducedto date. 6 The Entertainment Companies havealso neverspecifiedwhich documents shouldbe included in broadcategories suchas "lobbying" documents.The documentcategories not selfare evident,andmany documents could apparently qualify as "dual use." For instance, the Entertainment Companies havenot statedhow they would categorize documentfirst developea a for internal usebut then shownto a memberof Congress.As a result, throughoutthis disputethe Newmark Plaintiffs havehad to guessat what specificdocuments within thesebroadlyfall worded categories. 7More precisely,of a total of 708,000pagesproducedasat October2, 2002, 65% arethe documents producedto the Department Justice(MeeksDecln.~9) and 5% areestimatedto be of the older business financial recordsand "contentprotection" documents longer and no challenged, leaving approximately200,000pagesin issue.

INEWMARK PLAINTIFFS' OPPOSITION TO MOTION - 3 - CASE NO. CV. 01-9358FMC (Ex)
FOR REVIEW & RECONSmERATION & CONSOLWATED ACTIONS.

decision.They havefailed to meetthis burden. 2 IIV. 3
4

ARGUMENT A.
THE ENTERTAINMENT COMPANIES HAVE NOT MET THEIR BURDEN OF PROVING THAT THE MAGISTRATE JUDGE'S FACTUAL FINDINGS WERE CLEARLY ERRONEOUS.

5 6 7

1.

The Ma2istrate Judl!e correctly reQuired the Entertainment Comoaniesto demonstrate soecific and defmite harm from oossible disclosure and a sil!nificant risk of disclosure before I!rantin2 a orotectiye order. and correctly determined that they had failed to do ~

8
9

The party who movesfor a protectiveordermust show "good cause".F.R.C.P.26(c). The moving party hasthe burdento showthat "specific prejudiceor harm will result if no

10 protectiveorder is granted"(Phillips v. GMC, 289 F. 3d 1117, 121(9thCir. 2002» andthat
there"will indeedbe harm by disclosure."Cuno,Inc., v. Pall Corp., 7 F.R.D. 506, 508

by 12 (ED.N. Y. 1987). "Broad allegationsofhann, unsubstantiated specific examples"do not 3 14 supporta showingof good cause. US. v. DentsplyInternational,Inc., 187 F.R-D. 152, 158 (D.Del. 1999) Beforethe MagistrateJudge,the Entertainment Companies arguedthat the Brown Bag

s

16 test shouldgoverntheir motion. UnderBrown Bag, when opposingpartiesto a lawsuit are
17 business competitors,a motion to restrict access discoveryby an attorneywho makes to 18 19 20 competitivebusiness decisionsfor the opposingparty is decidedby "balanc[ing] the risk inadvertentdisclosureof tradesecrets againstthe risk

of

[of] impairedprosecutionof [the

opposingparty's] claims." 960 F.2d at 1470. Without decidingthe question,the Magistrate

arguendothat the Brown Bag test applied,but found that therewas no factual 21 Judgeassumed

22 basisfor the requested protectiveorder.
23 24 25 Thus,underboth F.R.C.P 26 andBrown Bag, the Entertainment . Companies the had burdenof showingboth that disclosure EFF Attorneysis likely, and that disclosure,shouldit by occur, is likely to result in specificharm to the Entertainment Companies.In their court papers

NEWMARK PLAINTIFFS' OPPOSITION TO MOTION FOR REVIEW & RECONSmERATION

- 5 - CASE NO. CV. 01-9358FMC (Ex)
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and in response direct questioning the MagistrateJudgeon this point, the Entertainment to by

2
3 4 5 6 7 8
9

Companies failed to meettheir burdenof proof on thesetwo points. See,e.g.,Transcript,pp. 910 (MagistrateJudge'srequestfor a descriptionof a concreteinstanceofhann). Here, as in their motion beforethe MagistrateJudge,the Entertainment Companies againfail to identify any specificdocumentor item of infonnation in the documents could be usedto hanDthem or that any concretehann that would "inevitably result." Motion at 7-10. Insteadof presentingspecific examples arisingfrom specificdocuments, the Entertainment Companies seekto prohibit EFF Attorneysfrom seeingand using hundredsof thousands pagesof documents of basedsolely on the conclusoryassertion that "disclosure. would be of greatstrategicbenefit to EFF." Joint Stipulationat 17. Moreover,they fail to identify any specificharm that would occurif the confidentialinfonnation were to be

10 11

12 inadvertentlydisclosed;they merely assertthat the infonnation would "infonn" EFF'sfuture
13 14 15 16 17
I

public lobbying strategy(Transcript,p. 10) andwould result in EFF "drawing on" the infonnation in its public statements. (Motion, 9: 19). The Entertainment Companies four specificpolicy issueswherethe EFF has list advocated different outcomethanthat favoredby the Entertainment a Companies: I) Legislationl or technologicaldevelopments intendedto control unauthorized or copying of a work; 2) use

ofunifonn standards digital copying; and 4) the for 18 Internetcontentfiltering; 3) the development 19 20 Broadcast Flag digital broadcasting anticopyingproposal. Joint Stipulationat 7. None of those questions at issuein this litigation and,evenasto thoseissues, Entertainment is the Companies

and 21 fail to identify the specific information of concernin their documents fail to explain how any 22 23
24

specifichanDwould befall their businesses selling television andmotion picture entertainmen~ of if the information was seenby EFF Attorneys. Next, the Entertainment Companies to demonstrate unacceptable fail "an risk" (Joint Stipulationat 10:13-15and Motion at 7:18-23)of inadvertent or disclosureof the use

25

iFOR REVIEW

NEWMARK PLAINTIFFS' OPPOSITION TO MOTION & RECONSmERATION

-6 - CASE NO. CV. 01-9358FMC (Ex)
& CONSOLmATED ACTIONS.

confidentialinformation herethat is materially greaterthan the risk that existsin all litigation.

2

Obviously, intentional use of this information by EFF Attorneys would violate the extant protective order in this case and subject EFF Attorneys to sanctions, up to and including

4

I

tennination of this caseand disbamlent. Suchintentionaluseis easilyguardedagainst,however

the the 5 Ijust asit is in any litigation. Stoppingshortof accusing EFF Attorneys of possessing 6 potential for intentionalabuse, Entertainment the Companies insteadintimate that the EFF Attorneyswould somehowinadvertentlymisusethe infonnation. Given that the only dangers

7

by the 8 they outline are intentional statements EFF Attorneysto Congress, public andthe press,it
9

is difficult to imaginehow an attorneycould "inadvertently"revealconfidential infonnation in

10 those circumstances. But even if such a massive slip of the tongue was possible, the
Companies havemadeno showingthat this risk is materially different from that in 1 Entertainment wherecounselareroutinely adverse the sameopposingparty and speak to 12 the many other cases 3 14 publicly aboutthe sameissues. For example,the MagistrateJudgeobserved that the sameconcernexistsin police

often review extremelysensitiveinternal police 15 misconductlitigation, whereplaintiffs' attorneys 16 investigationdocuments discovery. Thesesameattorneysalsolobby for more civilian in oversightof the police andpublicly speakout in ways antagonistic the interestsof the police. to Transcriptat 17:12-18:14.In response, Entertainment the Companies madeno attemptto show that the risk in that casewas different or that Brown Bag shouldnot apply in that context,insteao statingthat perhaps documents a police misconductcasewould be so "necessary" the the in and representation "narrow" that the risk of disclosure so might bejustified. Id. at 18:18-25. The Entertainment Companies not specifythe infonnation or documents did that they believe will hanDthem, did not specifyany purportedhanD,anddid not demonstrate any increased risk of harm compared otherlitigation. Accordingly, the MagistrateJudgecorrectly to determined that the Entertainment Company"Plaintiffs havefailed to demonstrate sufficiently a

7
18 19 20 21 22 23 24 25

NEWMARK PLAINTIFFS' OPPOSITION TO MOTION FOR REVIEW & RECONSmERA TION

- 7 - CASE NO. CV. 01-9358FMC (Ex)
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significant disclosure-related or dangerto warrantthe relief requested" risk underF.R.C.P 26. . 2 3 4
5

This Court shouldfind that they havenot carriedtheir burdenof showingthat the Magistrate Judge'sfinding is "clearly erroneous."

2.

6

The Mamstrate Jud2e correctly found that the relief sou2ht by the Entertainment Companieswould impair si2nificantlv the Drose~~on of the Newmark Plaintiffs' claims bv effectively Dreventin2 the EFF Attornevs from servin2 as liti2ation counselfor the Newmark Plaintiffs in this action.

7

In order to overturnthis finding of fact as"clearly erroneous," Entertainment the

must showthat the recordbelow lacks any evidentiarybasisfor the Magistrate 8 ICompanies
9

Judge'sdetenninationthat the proposed protectiveorder would significantly impair prosecution of the Newmark Plaintiffs' claimsby effectively preventingthe EFF Attorneys from serving as

10

1 the Newmark Plaintiffs' litigation counselin this action. 12
13 This detenninationis amply supported the record. The oral argumenttranscriptshows: by that the MagistrateJudgecarefully considered whetherthe relief soughtwould impair the EFF

the 14 Attorneys' ability to represent Newmark Plaintiffs. For instance,the MagistrateJudgenoted 15
"the impracticality of proceeding in this case . . . wherethe EFF Attorneyswould constantlyhave

Companies] stepout of the depositionand so forth." to 16 to be asked[by the Entertainment

1
18

:Transcriptat 20: 5-15). Similarly, he notedthat grantingthe relief soughtby the Entertainment Companies might put entitiesengaged both litigation andpublic advocacy, in like EFF, out of

(Transcriptat 6:23-25and 7:1,16:11-16,17:12-25and 18:1-14, and 20:5-15). 19 Ibusiness 20 21 22 23 24 25 The evidencebelow alsodemonstrated the proposed that protectiveorder would necessarily havereached beyonddocumentreview and depositions.The EFF Attorneys would not havebeenableto participatefully in propoundingdiscoveryor in preparingbriefs and motions whereconfidentialinformation is relied upon or must be rebutted,and would not be able to participatesubstantiallyin the trial itself. Joint Stipulationat 21:18-22:5;RothkenDecl ~20. Accordingly, the Entertainment Companies havenot met their burdenof showingthat theI

NEWMARK PLAlNnFFS' OPPOSITION TO MOnON FOR REVIEW & RECONSmERATION

- 8 - CASE NO. CV. 01-9358FMC (Ex)
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1 MagistrateJudge'sfinding that the protectiveorderwould effectively preventthe EFF attorneys
I

2
3
4

from servingas litigation counselin this actionwas clearly erroneous.

B.

THE MAGISTRATE JUDGE WAS CORRECT BOTH IN CONCLUDING THAT THE BROWN BAG TEST WAS NOT MET HERE AND IN APPLYING THE TEST ONLY ARGUENDO.

5

The EntertainmentCompaniesaskthis Court to extendBrown Bag beyondits traditionaJ scope,to a party who is not a business competitorandto attorneys who arenot competitive decisionmakers.Presumablyin recognitionof this stretch,the MagistrateJudgecarefully couchedhis decisionasassuming"arguendothe applicability in this context" of Brown Bag. Thus,while the MagistrateJudgewas correctthat this motion fails underthe Brown Bag test,he

6
7

8 9

10 was also correctin questioningwhetherBrown Bag applieshereat all.
11

The Brown Bag test is a limited, narrowrule that allows protectiveordersprecluding

12 specific counselfrom participatingin discoveryin well-defined,exceptionalcircumstances:
3 14
IS

wherethe opposingpartiesarebusiness competitorsin the sameproductor servicemarketand wherethe precludedcounselhasa competitivebusiness decisionmaking position for the opposingcompany. Implicitly recognizingthat they could not meetthe F.R.C.P.26 "good

Companies havearguedthat 16 cause"standardfor a protectiveorder directly, the Entertainment

7
18

the Brown Bag rule shouldbe extended reachthe quite different circumstances to ofdle EFF Attorneys' representation the NewmarkPlaintiffs. of This attemptto radically expandthe scopeof the Brown Bag rule shouldbe rejected. To date,the Brown Bag role hasonly beenappliedto preventaccess tradesecrets counselwho to by aredecisionmakers business at competitorsandwho, because their role in sucha competing of

19
20 21

22 organization,would be unableto avoid usingtheir competitor'sinfonnation to scoopthe market.
23 24
25

SeeBrown Bag, 960 F.2d at 1471("The resultingprotectiveorder strikesa reasonable balance betweenthoseinterestsby shieldingBrown Bag's in-housecounselfrom personalknowledgeof
a competitor's trade secrets.").

NEWMARK PLAINTIFFS' oPPOSmON TO MOTION FOR REVIEW & RECONSmERATION

- 9 - CASE NO. CV. 01-9358FMC (Ex)
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1

"'Competitive decisionmaking'refersto the in-housecounsel'srole, if any, in making companydecisionsthat affect contracts, marketing,employment, pricing, productdesign,or 'any or all of the client's decisions. . . madein light of similar or corresponding information abouta competitor.'" VolvoPenta v. BrunswickCorp., 187F.R.D. 240 (E.D. Va. 1999),quoting u: S.
SteelCorp. v. United States,730 F.2d 1465,1468& D.3 (Fed Cir. 1984). Courts have consistently

2 3
4 5

6 7 8
9

refusedto apply Brown Bag to counselwho were not competitivedecisionmakers.See,e.g., Volvo, 187F.R.D. at 243-44;Amgen,Inc. v. ElanexPharmaceuticals, Inc., 160 F.R.D. 134,139 (W.D. Wa. 1994);Fluke Corp. v. Fine InstrumentsCorp., 32 U.S.P.Q.2d1789(W.D. Wa. 1994); CarpenterTechCorp. v. Armcolac, 132F.R.D. 24, 27-28 (E.D. fa. 1990). Because Brown Bag rule appliesonly wherethe litigating partiesarebusiness the competitorsandthe targetedattorneysengage "competitivedecisionmaking"relative to in

10

12 13 14 15

competingproducts,it applieshereif andonly if the Entertainment Companies showboth can that EFF is a business competitorandthat EFF Attorneysengage "competitive in
." decisionrnaking They have shownneither.

First, the EFF is plainly not a business competitorof the Entertainment Companies:it

or 16 doesnot create,broadcast, distributemotion picture or televisionentertainment.Moreover,
17

the Entertainment Companies havenot producedevidence evensuggested their or that businesses selling television programmingandmovie contentwould be bannedby allowing of EFF Attorneys access thesedocuments.They havemerely identified differencesin the to parties' opinionson copyrightpolicy issuesthat havebeendiscussed open,public arenas.s in Second, Entertainment the Companies not cite a singlecasein supportof their do

18 19 20 21

that counselrule appliesoutsidethe contextor 22 assertion the limited "competitivedecisionmaker" 23 24 25 business competition. The Entertainment Companies assert that they needthis exceptional 8While it is possiblethat a governmental policy decisionor a shift in public opinion could ultimately harm the business interestsof the Entertainment Companies, situationis not this comparable a commercialcompetitor'susing a tradesecretto gain a business to advantage.

NEWMARK PLAINTIFFS' OPPOSITION TO MOTION FOR REVIEW & RECONSmERATION

- 10 - CASE NO. CV. 01-9358FMC (Ex)
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1

protectiveorder "for a simplereason,onerecognized the Ninth Circuit in comparable by situationsasdeservingspecialjudicial treatment: The threeEFF lawyersprimarily engage operateaspublic advocates, the mediaandbeforepublic policy makers."(Joint Stipulation, 1: in 20-24, emphasis omitted) But nowherein their briefs or argumentcan "comparable"facts or cases found. To the contrary,every casecited by the Entertainment be Companies involved counselemployedby, or engaged competitivedecisionmaking behalf of, a business in on competitor. SeeNewmark Plaintiffs' Portion of Joint Stipulationat 32, note 12). Indeed,in response a questionfrom the MagistrateJudge,the Entertainment to Companies acknowledged that they had not identified any casewhereoutsidecounselhad beendeniedaccess documents to because counselwas also engaged lobbying. Transcriptat 8:23-5,9:1 The Entertainment that in

2 3 4
5
6

7
8
9

10

11 Companies'claim of ,'comparable"situationsis simply unsubstantiated. 12
The Entertainment Companies'only real response beenthat the Brown Bag test can has

not 13 apply to outsidecounselwho arecompetitivedecisionmakers, just to in-housecounsel. 14 15 16 17 18 19 20 21 Entertainment Companies'Supplemental Memorandum, Cooper Decln. Exh.? at 3:1-5. This response missesthe point. As Brown Bag andnumerous cases following it havemadeclear,the key questionin applying the Brown Bag test is whetheran attorneyis engaged competitive ,in decisionmaking or on behalf of a business for competitor,not whetheror not the attorneyis inhouseor retainedcounsel.Brown Bag, 960 F.2d at 1470;Amgen,Inc. v. ElanexPharmacy,Inc., 160F.R.D. 134, 137-138(W.D. Wash. 1994);Fluke Corporation v. Fine InstrumentsCorp. etal 1994WL 739705(W.D. Wash. 1994) In short, EFF cannotpossiblybe characterized a business as competitorof the

Companies because EFF doesnot sell TV programmingor movie content,andthe 22 Entertainment Companies havenot shownthat any ofEFF's activities adverselyaffect their 23 Entertainment
I

24 25

marketfor the saleof theseitems. Nor havethe Entertainment Companies shownthat EFF Attorneys engage "competitive decisionmaking"for others,suchasby advising clients on in

NEWMARK PLAINTIFFS' OPPOSITION TO MOTION FOR REVIEW & RECONSmERATION

- 11- CASE NO. CV. 01-9358FMC (Ex)
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I

productsor servicesthat compete with thoseof the Entertainment Companies. Thus,the fact that the Brown Bag rule doesnot apply hereis an additionalreasonfor

2 3
4 5 6
I

affinning the MagistrateJudge'sorder.

c.

THE ENTERTAINMENT COMPANIES' MOTION IMPROPERLY SEEKSA FRESH DECISION ON THE MERITS BASEDON DIFFERENT EVIDENCE THAN TBA T BEFORE THE MAGISTRATE JUDGE.

Although the Entertainment Companies purport to move for review and reconsideration,
I

7 8
9
I

their motion actually asksthis Court to approvea protectiveorder different than that ruled on by the MagistrateJudge: one that would prohibit access their financial recordsand business to planssince2000 (the period during which the ReplayTV andother digital video recorderswere

10 first introducedinto the consumer market)andto the vaguecategoryof "lobbying" documents.
1 12 13
. Court I

By seekinga different protectiveorder,the Entertainment Companies effect ask this in
to exceed the limited scope of review of Magistrate Judges' orders provided by the Federal

Rulesandto decide,de novo, a new anddifferent motion basedon different facts.9 This post-hoc

of 14 I attemptto changethe scopeof the protectiveorder cannotcall into questionthe COlTectness 15 16 the MagistrateJudge'sdecisionof the motion actuallybeforehim, much lessshow that that decisionwas clearly erroneous This attemptto gain a second bite at the appleand reversethe

17 IMagistrateJudgefor failing to issuean orderthat he was neveraskedto issueshouldbe rejected. 18
Moreover,evenif cognizable,this new anddifferent protectiveorder also is unsupported

19 by the recordbeforethe Court. As they did beforethe MagistrateJudge,the Entertainment
20 21 22 23 24 25
I

Companies havenot attempted quantify the documents to they seekto withhold from the EFF Attorneys,much lessto give a log or otherdescriptionof the specific documents.The Entertainment Companies not explain this omission,which preventsthe Newmark Plaintiffs do
9

This tactic of aggressively stakingout an extremeandunreasonable position, reducingit when

bringing it beforethe Magistrate,then reducingit further when appealingthe Magistrate's ruling to this Court increases delay and attemptsto transfoml the Court'sreview of the Magistrate Judge's order into the de novo decisionof a new motion with new facts,contraryto the process for review of MagistrateJudgedecisionsestablished the federalrules and the Judiciary Act. by

NEWMARK PLAINTIFFS' OPPOSITION TO MOTION
I

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& CONSOLmATED ACTIONS.

FORREVIEW & RECONSmERA TION

andthis Court from making an infonned assessment the effect of the proposedrestriction on of 2 3 4 5 the Newmark Plaintiffs' ability to pursuetheir caseeffectively. Sincethe Entertainment Companies bearthe burdento demonstrate hanDwith specificexamples, their motion shouldbe deniedfor this reasonalone. SeePhillips v. GMC, 289 F.3d 1117,1121(9th Cir. 2002) D.
EVEN AS NARROWED, THE PROPOSED RESTRICTION WOULD MATERIALLY PREJUDICE THE NEWMARK PLAINTIFFS BECAUSETHE THREE CATEGORIES OF DOCUMENTSTHAT THE ENTERTAINMENT COMPANIES STILL SEEK TO WITHHOLD FROM THE EFF ATTORNEYS ARE CRUCIAL TO PROVING THE NEWMARK PLAINTIFFS' FAIR USE CASE.

6
7 8 9

Having narrowedthe categories withheld documents all of the "lobbying" of to documents, to the "business and plans" and "financial documents information" from 2000 to and

assert, without any factual support,that that theseare 10 the present,the EntertainmentCompanies 1 only a "small portion," relatively few," anda "handful" of the documents produced.(Motion at

12 12:5,3:15 and 10:25respectively). They accordinglyconcludethat the "limited natureof this
eliminatesEFF's argumentthat the relief requested 13 Motion necessarily 14 15 16
17

would prejudicethe

NewmarkPlaintiffs." (Motion 10:15-28). This is plainly false. Basedupon previousestimates forth by the Newmark Plaintiffs, which the put Entertainment Companies havenot contested, new protectiveorder requestappears the to preventthe EFF Attorneys from reviewing approximately 200,000pagesproducedso far.lO Moreover,althoughthe Entertainment Companies havenot specifiedeventhe raw number,mucn
I

18 19

lessthe specific descriptionof the particulardocuments they now seekto include in the

demonstrate they will be extremely that 20 protectiveorder,the categorydescriptionsthemselves 21 importantto proving the NewmarkPlaintiffs' fair useclaim. The fourth fair usefactor under 17

22
23 24 25 10 note 7, supraand MeeksDecln, 1[7-11.This figure is calculatedon the basisof a total of See 708,000pagesproducedasat October2, 2002. The Entertainment Companies havenow eliminatedthe "Departmentof Justice"documents producedpursuantto an antitrust investigationinto the Entertainment Companies'online movie services, and its businessand financial recordsprior to 2000. That leaves30% of the documents, approximately200,000 or pages,subject to the new protectiveorderbeing sought.

NEWMARK PLAINnFFS' oPPOSmON TO MOTION FOR REVIEW & RECONSmERATION

- 13 - CASE NO. CV. 01-9358FMC (Ex)
& CONSOLmATED ACTIONS.

v.s.c. §107is the effect of the NewmarkPlaintiffs' useof the ReplayTV device,specifically the 2 3 4 5 "CommercialAdvance" and "SendShow" featuresandits archiving abilities, on the value of the Entertainment Companies'currentand likely future marketsfor their copyrightedworks. The currentfinancial documents will likely containinfonnation aboutthe actualimpact of commercialadvance ReplayTV deviceuserson the Entertainment by Companies'marketsanQ products,aswell asthe impact caused commercialfast-forwardingby other competitordigital! by

6

will 7 video recorders(DVRs) suchasTiVo. The currentfinancial documents alsoreflect other 8
9

factorsthat impact the value of TV showsandmoviesquite apartfrom DVRs, including general economictrendsandother new technologies. Similarly, the business planswill indicateboth the Entertainment Companies'forecasts

10

including online 1 of the financial impact ofDVRs andothertechnologicalandeconomicchanges, 12 downloadsand video-on-demand" will alsoindicatethe Entertainment and Companies' business

for the on 13 strategies adjustingto andaccommodating predictedimpactsof thesechanges their 14 marketsand the value of their products. 15 Finally, the nonpublicdocuments the Entertainment that Companies in lobbying use

,II to on and 16 Congress administrativeagencies will reflect whethertheir representations Congress

17

the expected impact ofDVRs on the marketsfor their goodsareconsistent with their representations this Court. to Thesethreecategories infonnation areundoubtedlyamongthe most relevantof all the of documents producedby the Entertainment Companies the NewmarkPlaintiffs' fair useclaims to andthey arenot availablefrom any other source. Therefore,althoughthey may be smallerin volume, the documents that the Entertainment Companies seekto preventEFF Attorneys from accessing include core documents still requiredto prove the Newmark Plaintiffs' case.

18 19 20 21 22 23 24 25

II Most of the documents usedto lobby administrativeagencies public documents are pursuantto law. Seee.g.,47 C.F.R.1.1200to 1.1216(FCC Ex Parte Procedures).

INEWMARK PLAINTIFFS' OPPOSITION TO MOTION - 14 - CASE NO. CV. 01-9358FMC (Ex)
FOR REVIEW & RECONSmERATION & CONSOLWATED ACTIONS.

The Entertainment Companies respondthat the Newmark Plaintiffs will not be prejudicea the 2 by the loss of threeof their attorneysof recordbecause soleremainingattorney,Ira Rothken, 3 4 5 could sufficiently handlepresentation thesecore issuesalone. While the lack of particular of descriptionsor evenraw numbersof documents issuemakea detailedresponse at impossible,it is clearthat the practical effect of the proposed restrictionwould be that threeof Newmark Plaintiffs' four counselof recordcould not participatein the major part of the casepreparation. Even if Mr. Rothkencould single-handedly review all thosedocuments handleevery stepof and the litigation in which they arereferredto or relied upon,12 proposed the restriction would still materially prejudicethe NewmarkPlaintiffs by preventingtheir full, chosenlegal teamfrom representing them. Seee.g. Declarations Newmark,Hughes,Ogden,Fleishmanand Wright, of Exhibits B-E of Newmark Plaintiffs Supplemental Memorandum,CooperDecln. Exh. 8.

6 7
8
9

10
]

12
13 14 15

E.

THE ENTERTAINMENT COMPANIES MISCBARACTERIZE THE NEWMARK PLAINTIFFS' FIRST AMENDMENT ARGUMENTS

As the wording of the Ordermakesclear,the MagistrateJudgereachedhis decisionby applying the balancingtest of the Brown Bag case. As a result,he did not haveto reachthe

to 16 Newmark Plaintiffs' First Amendmentarguments.However,if this Court finds it necessary 17 reachthosearguments, in the interests correctingthe recordbeforethe Court, the and of

Companies havemischaracterized First the 18 Newmark Plaintiffs note that the Entertainment 19 Amendmentarguments.First, the Entertainment Companies statethat "EFF's attorneyshave

this 20 challenged Motion primarily on First Amendmentgrounds"(Motion, at 8: 20, FN 4). This i~ the 21 plainly incorrect,asthe pleadingsbelow demonstrate; First Amendmentargumentconstitutes: 22 23
24

only threeof the twenty pagesof the Newmark Plaintiffs' portion of the Joint Stipulation (Joint Stipulation at 28-31). Second, Entertainment the Companies haveclaimedthat EFF arguedthat ''as a self-proclaimed'public interest' organization,EFF enjoysa privileged placein the
12See Rothken Decln. 120.

25

NEWMARK PLAINTIFFS' OPPOSITION TO MOTION FOR REVIEW & RECONSillERA TION

- 15 - CASE NO. CV. 01-9358FMC (Ex)
& CONSOLillATED ACnONS.

1

hierarchyof First Amendmentprotections"andthat EFF wrongly confusedits First Amendment interestswith thoseof its clients (Motion at 4:21-25). Basedon that mistakenassertion, the Entertainment Companies then seekto distinguishthe cases cited by Newmark Plaintiffs, and cite SeattleTimesCo. v. Rhinehart,467 U.S. 20 (1984)to supportthe propositionthat the First Amendmentdoesnot apply to the currentcase. This misstates NewmarkPlaintiffs' argument, setout in the Joint Stipulation,as the as well asFirst Amendment jurisprudence. The Newmark Plaintiffs arguedthat the Entertainment Companies'attemptto disqUalifythe EFF Attorneyson the basisof their role aspublic policy advocates implicatesthe First Amendmentrights ofEFF's clientsto freedomof association and

2 3
4 5 6

7
8
9

10 choiceof counsel,aswell asEFF'sown right to petition the governmentand speakto the press.
1 As a result, any proposedrestrictionon the basisofEFF's political speech and government

12 petition rights must be scrutinizedunderthe First Amendment. The samewould be true of any
in 13 organizationengaged both public advocacyandlitigation, including all the amici who filed an below in supportof the Newmark Plaintiffs, not just EFF. See 14 amicusbrief in the proceeding 15 Amicus brief, CooperDecln. Exh.9. The Entertainment Companies'arguments, accepted, if

17

16 would havebroadFirst Amendmentimplicationsfor otherpublic interestorganizationsand even private attorneyswho makepublic statements issuesrelatedto their cases. on 13

18
19 20 21 22
23

13 Ironically, this rule would alsopresumably reachall threeof the law firms representing the Entertainment Companies here,sinceall lobby Congress behalf of their clients. Nothing on aboutthe Entertainment Companies' rationaleherewould preventapplicationof this new rule to preventthem from litigating cases wherethey alsorepresent client positionsbefore Congress on issueswherethey are adverse their litigation adversaries.For instance,O'Melveny & Meyers to LLP offers lobbying and legislativeservicesentitled "StrategicCounselingon Legislation and Policy": <http://www.omm.com/webcode/navigate.asp?nodeHandle=675>; Proskauer RoseLLP offers servicesentitled "Legislative Counselingand GovernmentLiaison": <http://www.proskauer.com/practice_areas/areas/O73> and McDennott, Will & Emery offers a comprehensive lobbying and "Intellectual PropertyLegislativeServices"practice: <http://www.mwe.com/area/legisOO6.htm>. INEWMARK PLAINTIFFS' OPPOSITION TO MOTION - 16 - CASE NO. CV. 01-9358FMC (Ex)
FOR REVIEW & RECONSmERATION & CONSOLmA TED ACTIONS.

24 25

Finally, SeattleTimesdoesnot apply here. That caseconsidered whetherthe First

2 3
4 5 6 7 8
Q

Amendmentprohibits a mediaparty from beingboundby a protectiveorder that limited its ability to publicize for nonlitigation purposes information it receivedin discovery. Here,the Entertainment Companies seeksomething markedlydifferent: They seekto preventEFF Attorneys from accessing discoveryinfonnation for litigation purposes the first place,which in goesto the heart of their ability to represent their clients. The EFF Attorneyshave long agreed to be boundby the protectiveorder andto refrain from any prohibiteduseor disclosure- they haveevendemonstrated they havedoneso successfully many other cases.Cohn Decl. that in ~11-13, CooperDecln. Exh.5.

10
II

v.

CONCLUSION Thereis no basisin law or fairnessto allow the Entertainment Companies deny the to

thosesameattorneysspeakin public 12 NewmarkPlaintiffs their chosenattorneyssimply because on with the Entertainment Companies.The 13 andto Congress issueswherethey disagree 14 15 MagistrateJudge'sorder shouldbe affinned.
c_-~~../'"~~~~~--;;;It, ..," r""~~~~"~~ ('1""""./

16
17 18 19 20 21

CindyA. Cohn, Esq. (SBN.145997) Fred von Lohmann, Esq. (SBN .192657) Robin D. Gross, Esq. (SBN 200701) ELECTRONIC FRONTIER FOUNDA nON 454 Shotwell Street San Francisco, CA 94110 415-436-9333 xl08 (Phone) 415-436-9993 (Fax) Attorney for Plaintiffs Craig Newmar~ Shawn Hughes,

22
23
24

Keith Ogden,Glenn Fleishmanand Phil Wright

25

NEWMARK PLAINTIFFS' OPPOSITION TO MOnON FOR REVIEW & RECONSmERA TION

- 17 - CASE NO. CV. 01-9358FMC (Ex)
& CONSOLmATED ACTIONS.

PROOF OF SERVICE

2
3

4
5

Paramount Pictures Corporation v. ReplayTV CASE NO. CV 01-9358FMC (EX) (Consolidated With CaseNo. CV 02-04445FMC (EX» US District Court, Central District of California I am over the ageof 18 years,am not a party to this action and am employedby Plaintiff's Counsel,ElectronicFrontier Foundation. On December 2002, I servedthe within: 2, NEWMARK PLAINTIFFS' OPPOSITIONTO ENTERTAINMENT COMPANIES' MOTION FOR REVIEW AND RECONSillERA TION OF MAGISTRATE JUDGE'S DISCOVERY ORDER
I

6 7 8 9 10
1

on the partiesin said actionby FACSIMILE, E-MAIL andUS MAIL by depositinga copy in an envelope, postageprepaidin a US MAIL BOX addressed follows: as

12
I

13

ScottP Cooper

Proskauer Rose 2049 CenturyPark E, Ste3200 14 Los Angeles,Ca 90067-3206 15 Fax No. 310-557-2193 scooper@proskauer.com

6 7

EmmettCharlesStanton Fenwick & West 2 Palo Alto Sq., Ste 800 PaloAlto, CA 94306 Fax No. 650-494-1417 estanton@fenwick.com RobertH Rotstein McDemlott Will & Emery 2049 CenturyPark E, 34th Fl. Los Angeles,CA 90067-3208 Fax No. 310-277-4730 rrotstein@mwe.com

LawrenceFPulgram Fenwick & West 275 Battery St., Ste 1500 SanFrancisco,CA 94111 Fax No. 415-281-1350 Ipulgram@fenwick.com

18 9
20 21
22

Alan Rader RobertM. Schwartz O'Melveny & Myers LLP 1999Avenueof the Stars Los AngelesCA 90067-6035 Fax No. 310-246-6779 arader@omm.com rschwartz@omm.com
'
I

23
24

I declareunderpenaltyof perjury underthe laws of the Stateof California that the foregoing is true and correct. Dated:December 2002 2,
b BARAK R. WEINSTEIN :c.i,!,c"":' ..

25
26 27 28

PLAINTIFF GLENN FLEISHMAN'S ANSWERSTO COPYRIGHT OWNERS' FIRST SET OF SPECIAL INTERROGATORIES