Digital Millennium Copyright Act claims

Federal District Court Opinions

STATIC CONTROL COMPONENTS, INC. v. LEXMARK INT., (E.D.Ky. 12-13-2006) STATIC CONTROL COMPONENTS, INC., PLAINTIFF/COUNTERCLAIM DEFENDANT v. LEXMARK INTERNATIONAL, INC., DEFENDANT/COUNTERCLAIM PLAINTIFF v. WAZANA BROTHERS INTERNATIONAL, INC., d/b/a MICRO SOLUTIONS ENTERPRISES, PENDL COMPANIES, INC., and NER DATA PRODUCTS, INC., COUNTERCLAIM DEFENDANTS. CIVIL ACTION NO. 04-84-KSF. United States District Court, E.D. Kentucky, Lexington. December 13, 2006

MEMORANDUM OPINION AND ORDER

JAMES TODD, Magistrate Judge

I. INTRODUCTION

On February 24, 2004, plaintiff Static Control Components,
Inc. (hereafter “SCC”), filed this declaratory judgment
action against defendant Lexmark International, Inc.
(“Lexmark”), seeking a judgment that SCC had not violated
the Copyright Act, 17 U.S.C. §§ 101 et seq.,
in respect to Lexmark’s copyrighted computer programs, and
that SCC had not violated the Digital Millennium Copyright
Act, 17 U.S.C. §§ 1201 et seq., (hereafter
“DMCA”).

In responding to SCC’s complaint, on March 16, 2004,
Lexmark asserted counterclaims against SCC for alleged
patent infringement arising under the patent laws of the
United States, 35 U.S.C. § 1, et seq., alleged
violations of the DMCA[fn1], and for alleged violations of
the laws of the Commonwealth of Kentucky, including
intentional interference with contractual relations,
intentional interference with prospective economic
advantage, and civil conspiracy. Lexmark seeks Page 2
damages and injunctive relief. In its counterclaims,
Lexmark also asserted claims against Wazana Brothers
International, Inc., d/b/a Micro Solutions Enterprises;
Pendl Companies, Inc.; and NER Data Products, Inc.

Specifically, this action concerns (1) Lexmark’s Toner
Loading Program and Printer Engine Program Lexmark
incorporated in Lexmark’s T520/522 and T620/622 laser
printers, (2) Lexmark’s Prebate toner cartridges and
Regular toner cartridges used in Lexmark’s T520/522 and
T620/622 laser printers, and (3) SCC’s “redesigned
microchips, which Lexmark alleges contain unauthorized
copies of its copyrighted Toner Loading Programs, as
asserted in its counterclaims. In Counts 2 and 3 of the
complaint, SCC seeks a determination that it has not
violated the DMCA in respect to Lexmark’s Toner Loading
Programs and Printer Engine Programs, respectively.

Subsequently, Lexmark moved for a preliminary injunction,
pursuant to Fed.R.Civ.P. 65, requesting the court to enjoin
SCC from making, selling, distributing, importing,
marketing, offering for sale, or otherwise trafficking in
its “redesigned” microchips intended for use with Lexmark’s
T520/522, T620/622, and T630/632 printers and toner
cartridges. This motion was later resolved by entry of an
Agreed Order.

Thereafter, on September 12, 2005, the district court
entered a Scheduling Order herein. [DE #145]. In numerical
¶ 13 thereof, the district court referred all
discovery disputes to the Magistrate Judge, pursuant to 28
U.S.C. § 636(b)(1)(A), for resolution.

This matter is before the court on SCC’s motion to compel
the continuation of Lexmark’s Rule 30(b)(6) deposition. [DE
#420]. This motion has been fully briefed and is ripe for
review.

II. SCC’S MOTION TO COMPEL

As grounds for its motion to compel the continuation of
Lexmark’s Rule 30(b)(6) deposition, SCC states that pursuant
to Fed.R.Civ.P. 30(b)(6), it served Lexmark with a Notice
of Deposition that identified eight (8) topics relating to
Lexmark’s claims of copyright infringement, SCC’s defenses
thereto, and SCC’s complaint for declaratory judgment of
noninfringement. SCC states that Lexmark’s Rule 30(b)(6)
deposition occurred on July 28, 2006, that Cyrus Clarke, a
Lexmark Page 3 employee, was Lexmark’s designated
representative, that Mr. Clarke was unable to answer
numerous fundamental questions within the scope of the
eight topics noticed for this deposition, and that he had
made no preparations to be deposed on two of the deposition
topics.

Consequently, as the result of the answers Mr. Clarke gave
to SCC’s questions during Lexmark’s Rule 30(b)(6)
deposition, SCC asserts that Lexmark failed to comply with
its obligations under Rule 30(b)(6) to provide a witness
capable of answering fully, completely, and unevasively, on
behalf of the corporation, questions within the subject
areas identified in the Notice of Deposition and that
Lexmark has been unwilling to produce another witness for
the continuation of its Rule 30(b)(6) deposition for the
purposes of providing full and complete answers to the
questions within the scope of the Notice of Deposition that
Cyrus Clarke was unable to answer. For these reasons, SCC
has moved the court to compel the continuation of Lexmark’s
Rule 30(b)(6) deposition and to direct Lexmark to produce
one or more witnesses, as its Rule 30(b)(6) designated
representative(s), who can provide full and complete
answers to the questions Cyrus Clarke could not answer. SCC
has also requested that it be awarded the costs associated
with the continuation of Lexmark’s Rule 30(b)(6)
deposition.

In response, Lexmark opposes SCC’s motion to compel the
continuation of its Rule 30(b)(6) deposition, asserting
that Cyrus Clarke gave full and complete testimony on all
non-privileged, non-expert, and non-objectionable portions
of SCC’s Rule 30(b)(6) topics. Lexmark points out that
prior to the Rule 30(b)(6) deposition in question, it
objected to SCC’s noticed topics “as being overly broad,
unduly burdensome, oppressive, vague, and ambiguous,” and
that SCC’s broad topics did not “describe with reasonable
particularity the matters on which examination is
requested,” as required by Rule 30(b)(6), and that SCC
elected to proceed with the Rule 30(b)(6) deposition in the
absence of resolving Lexmark’s objections to the noticed
topics. For this reason, Lexmark argues that SCC now has no
basis to complain about subject matter that was not
described with reasonable particularity in SCC’s notice.
Page 4

Lexmark also contends that SCC’s allegation that Lexmark
intentionally designated a Rule 30(b)(6) representative who
lacked personal knowledge concerning the subject matter
identified in the Rule 30(b)(6) Notice of Deposition is
without merit. Lexmark insists that its Rule 30(b)(6)
representative, Cyrus Clarke, was prepared, willing and
able to testify and did, in fact, provide such testimony.
Lexmark asserts that Cyrus Clarke was a knowledgeable
deponent in that he is a former team leader and was a team
leader in monochrome laser engine code development (i.e.,
the Printer Engine Program) from 1988 to 2000. Lexmark
states that to prepare for this deposition, Cyrus Clarke
reviewed the Notice of Deposition, interviewed several
engineers (Douglas Able, Keith Richardson, and Craig Bush),
reviewed program code, and reviewed specifications and
documents relating to the toner estimation code and the
memory map of the chip. (Rule 30(b)(6) deposition, at pp.
11-12). For these reasons, Lexmark asserts that SCC cannot
be heard to argue that Cyrus Clarke was not a competent
Rule 30(b)(6) representative.

Furthermore, without conceding that Cyrus Clarke’s
testimony may have been deficient, Lexmark argues that in
the event Cyrus Clarke’s testimony may arguably have been
deficient in some respects, SCC was not prejudiced by any
deficiencies therein because SCC has subsequently obtained
additional answers from other deponents, Bruce Maggs,
Lexmark’s copyright expert, and Douglas Able, a Lexmark
employee who was one of the creators of Lexmark’s
copyrighted works at issue.

Analysis

In considering this matter, the Magistrate Judge has
reviewed, in addition to the memoranda filed in support of
and in opposition to SCC’s motion to compel the
continuation of Lexmark’s Rule 30(b)(6) deposition, the
transcripts of the depositions of Cyrus Clarke, Bruce
Maggs, and Douglas Able. It is true that Cyrus Clarke was
unable to provide a definitive answer to every single
question asked of him during this Rule 30(b)(6) deposition;
however, that fact, in and of itself, does not mean that
his testimony was deficient or that SCC was prejudiced by
his testimony. In the event that Cyrus Clarke’s testimony
may be perceived to be deficient in some manner, the
Magistrate Judge also Page 5 concludes that SCC has
nevertheless obtained all of the information to which it is
entitled, since it appears that Bruce Maggs and Douglas
Able were able to provide answers to those questions that
Cyrus Clarke was unable to answer. Although Bruce Maggs and
Douglas Able were not Rule 30(b)(6) designated
representatives, the information they provided to SCC
essentially filled in the gaps in information Cyrus Clarke
was unable to provide. Thus, any potential prejudice to SCC
due to Cyrus Clarke’s inability to answer every question
posed to him with a definitive answer was remedied by the
information SCC subsequently obtained from Maggs and Able.

Consequently, for all of the foregoing reasons, the
Magistrate Judge concludes that SCC’s motion to compel the
continuation of Lexmark’s Rule 30(b)(6) deposition is
without merit.

Accordingly, IT IS HEREBY ORDERED that plaintiff’s motion
to compel the continuation of Lexmark’s Rule 30(b)(6)
deposition [DE #420] is DENIED.

[fn1] However, as a result of the Sixth Circuit’s decision
on appeal of the “`02 action,” the parties agreed to file a
stipulation to entry of summary judgment on Lexmark’s DMCA
claims.