United States District Court, D. Massachusetts
ORDER ON PLAINTIFF’S MOTION TO COMPEL PRODUCTION OF DOCUMENTS (#136).
M. PAGE KELLEY UNITED STATES MAGISTRATE JUDGE.
Familiarity with the facts of this case as set out in the court’s Order regarding #131, Gobbler’s motion to strike, (# 216) is presumed.
Avid filed this motion to compel (#131) and Gobbler responded (#151). Avid replied (#159) and on January 19, 2016, the court heard oral argument on the motion. After the hearing, Avid filed a Notice of Supplemental Authority regarding its motion (#168) and Gobbler replied (#180). On February 9, Avid filed a second Notice of Supplemental Authorities (#196-2) and on February 11, Gobbler replied (#207).
II. Avid’s Motion to Compel
A. Communications between Chris Kantrowitz and Attorney Rafter
In 2012 Gobbler and Avid entered into a license agreement that allowed Gobbler to use Avid’s Pro Tools Session File Format Software Development Kit (“SDK”) and later, Avid gave Gobbler permission to use its trademarks and logos. (#151 at 2.) On June 9, 2014, Avid informed Gobbler that it was terminating the SDK agreement as of August 10, 2014. (#168 at 2.) On August 27, 2014, Avid reminded Gobbler by letter that the SDK agreement had been terminated, asked Gobbler to return the SDK, destroy all copies of it, stop using the SDK, and stop using all Avid logos. Id. After Chris Kantrowitz, Gobbler’s CEO, received the letter from Avid, he asked Attorney Heather Rafter to contact attorneys for Avid to see if any issues could be worked out. Id. at 3. A series of communications between Attorney Rafter and counsel for Avid ensued. Id. at 3-4. Disputes were not resolved, and Avid filed this case on September 30, 2014. Id.
In October 2015, Avid deposed Mr. Kantrowitz, in his individual capacity and also as Gobbler’s Rule 30(b)(6) witness. (#151-1 at 4; See #204 for excerpts of his testimony.) At his deposition, Mr. Kantrowitz testified to statements he made to Attorney Rafter, who was a business consultant to Gobbler but who also acted as Gobbler’s attorney at certain times. (#151-1 at 3.) He stated that in August 2014 he received the above-mentioned letter from Avid, notifying him that the SDK agreement had been terminated and instructing him, among other things, to return or destroy the SDK and to take Avid’s logos off Gobbler’s website. He said that he asked Attorney Rafter to call counsel for Avid and speak to them, to say something to the effect of, “hey, what do you need us to do so that you’re satisfied with the result?” (#136 Exh. C at 563, 565).
At the deposition, when Mr. Kantrowitz was asked whether he returned the SDK, as the letter requested, he stated: “I said to Heather [Rafter] ‘you just tell us what you need us to do with this because we’d be more than happy to return the SDK or destroy all copies of the SDK. Like, we never used it in the first place. So whatever needs to be done to satisfy them, I’m more than happy to do.’” (#204 at 546.) When Mr. Kantrowitz was pressed on whether anyone at Gobbler destroyed the electronic access that Gobbler had to the SDK, he went on to explain that as Attorney Rafter was negotiating with Avid’s counsel, it became clear that Avid was determined to sue Gobbler, and “the advice I was getting from our attorneys was ‘don’t touch anything because they could view that as you trying to destroy evidence.’” (#204 at 565-66, 567 (saying the same thing).)
When asked whether he instructed anyone at Gobbler to remove Avid’s logos from the website, he said, “I was also informed by Heather or my lawyers ‘don’t touch the website because that will be considered destroying evidence.’” (#204 at 574; 575 (saying the same thing).) He continued:
So, you what, [sic] and what I remember was, this happened. Heather started talking to John Given [counsel for Avid]. It was like ‘okay. We should take the logos down.’ ‘I’m like, fine. No problem.’
And then the next thing I know I’m being told ‘don’t take the logos down because if you do, it will be seen as destroying evidence.’ And so I was, like, ‘okay. Well let me know when we can.’ So and then we took them down.
(#204 at 576.)
Gobbler produced a privilege log in which it identified documents relating to communications between Gobbler and Attorney Rafter that took place starting in June 2014 regarding Avid’s termination of the SDK agreement. (#154 Exh. 5.) Avid seeks production of certain of the entries that it believes concern communications between Mr. Kantrowitz and Attorney Rafter about which Mr. Kantrowitz ...