Document Requests from Copyright Owner
(Plaintiff) to Alleged Infringer (Defendant)

Summary

This template for document requests under Fed. R. Civ. P. 26(b)(1) and 34 may be used by a plaintiff in a copyright litigation in federal district court. This template includes practical guidance, drafting notes, and alternate and optional clauses. The term Plaintiff's Work is used to mean the copyright-protected work that the plaintiff asserts has been infringed. The term Accused Work refers to the defendant's accused work. Rule 34 permits a party in a federal lawsuit to serve on other parties requests to: • produce or permit inspection of designated documents, or electronically stored information (ESI) • produce or permit inspection of designated tangible things – and – • permit entry on designated land or property for inspection, measurement, or the like See Fed. R. Civ. P. 34(a)(1) & (a)(2). When preparing document requests, keep in mind Rule 26(b)(1)'s guidance on the scope, limits, and proportionality of party discovery. You are entitled to discover information relevant to any party's claim or defense provided the scope of your discovery is proportional to the needs of the case, in view of the following: • The importance of the issues in the case • The amount in controversy • The parties' relative access to information • The parties resources • The importance of a particular avenue of discovery to resolving issues in the case – and – • Whether the benefits of the proposed discovery outweigh the burdens See, for example, D'Pergo Custom Guitars, Inc. v. Sweetwater Sound, Inc., 2019 U.S. Dist. LEXIS 6074, at *10-12 (Jan. 14, 2019, D.N.H.) (denying a motion to compel responses to most of copyright plaintiff's 109 document requests, setting a narrow scope for defendant's production of documents to the plaintiff, and noting that plaintiff had failed to show that its numerous requests were proportional to the needs of the case). As a copyright plaintiff, you must prove the following elements of your infringement claim: • Ownership of a valid copyright – and – • Copying by the defendant of the constituent elements of the plaintiff's work that are original Note that the copying element is made up of two sub-elements: • Copying in fact • Unlawful appropriation See Harper & Row, Publrs. v. Nation Enters., 471 U.S. 539, 548 (1985); Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 832 (10th Cir. 1993) (explaining sub-elements of copying); see also Nimmer on Copyright § 13.01. In addition to the elements of your infringement claim, your document requests should seek information related to damages. A prevailing copyright plaintiff can recover three different types of damages: • Actual damages (e.g., revenue lost by plaintiff due to defendant's infringement) • Statutory damages (per-infringement amounts set by statute according to criteria such as the seriousness of the infringing act and the financial worth of the infringer) • Infringer's profits (in cases where the defendant's profits from the infringing work(s) are greater than the actual damages to which the plaintiff would be entitled) See 17 U.S.C. § 504(b) & 504(c); see also Nimmer on Copyright § 14.02 (actual damages), Nimmer on Copyright § 14.03 (defendant's profits), and Nimmer on Copyright § 4.04 (statutory damages). Your adversary will likely seek to rebut your prima facie case of infringement. Thus, you should seek production of any documents related to the defendant's assertions of: • Lack of originality (i.e., a challenge to the protectability of the plaintiff's work under the copyright law) • Invalid registration • Lack of full ownership of the copyright in the plaintiff's work The defendant will have the burden of proof as to any affirmative defenses. Use your document requests to flush out any evidence the defendant may possess that would support its affirmative defenses. Commonly raised, copyright-specific affirmative defenses include the following: • Fair use • Independent authorship • Common source • Joint ownership • Scènes à faire (necessary component of the genre) • Statute of limitations • Abandonment of copyright • Licensed or otherwise authorized use See Nimmer on Copyright §§ 13.04-13.09 In recent years, there has been confusion about whether fair use is, as a matter of pleading and proof, an affirmative defense or merely an excuse to the plaintiff's charge of infringement. See Dr. Seuss Enters., Ltd. P'ship v. ComicMix Ltd. Liab. Co., 983 F.3d 443, 459 (9th Cir. 2020) (reviewing cases and concluding that the Supreme Court and the Ninth Circuit had "unequivocally placed the burden of proof on the proponent of the affirmative defense of fair use."); but see Lenz v. Universal Music Corp., 801 F.3d 1126, 1132-33 (9th Cir. 2015) (in the context of the Digital Millenium Copyright Act, classifying fair use as an "authorization," which renders the accused act of copying non-infringing). For more on discovery scope and Rule 26(b) generally, see Scope of Discovery (Federal) and Scope of Discovery Checklist (Federal). For more on document requests generally, see Document Requests: Initial Considerations (Federal), and Document Requests: Drafting RFPs Checklist (Federal). For additional information on copyright litigation, see Pre-suit Considerations in Copyright Litigation. For an overview of copyright infringement claims and defenses, see Copyright Enforcement Resource Kit.