Re: Copyright & Discovery

From: C.E. Petit, Esq. <cepetit[_at_]usa.net>
Date: Sun, 08 Nov 1998 12:30:10 -0600

Bob Stock <bstock[_at_]ucla.edu> asks:
>
> The other side serves a set of requests for document production on
> you. One of the individual requests demands that you copy a software
> manual. That manual has a valid copyright and you don't own it.
> *Can* you object (assume there are no other grounds for objecting)
> to the request because to comply would require infringing the software
> manual copyright? *Must* you object? Is copying the manual fair use?

I've actually had to deal with this one, Bob (as the requester). As I understand the Federal rules, there are basically four options:

• Produce them, and assert "fair use." This is relevant if there may be a lot of annotations in the margin, and (particularly) if you're checking to see if versions have been properly updated.
• Produce them for inspection only. Remember, the rules do not require that the producing party provide copies, only make the documents available for inspection and copying. This has the dual advantages of putting the onus of any copyright violation upon the requester and letting you peek over the requester's shoulders at what is considered significant. I recommend photocopying the title and copyright pages and appending a clear page that states that the remainder of the document is available for inspection, citing the copyright code.
• Be an obstreporous ass (typical insurance defense counsel) and refuse to produce on the grounds that the copyright code prohibits you from making the copy, or that it's proprietary and not calculated to lead to discoverable evidence, or some such nonsense.
• Negotiate with the requester (heavens!) and find out what's relevant--copying a small excerpt may make everyone relatively happy.

Whatever you do, don't just refuse to produce without consulting the local rules--some districts (the Northern District of Illinois) are stricter on production and objections than others (such as the District of Connecticut), and the judge may have additional rules.

---

C.E. Petit, Esq.			cepetit[_at_]usa.net
Human Kinetics Publishers		Champaign, Illinois

(this posting is a personal opinion and does not necessarily reflect my employer's) Received on Sun Nov 08 1998 - 18:38:27 GMT