Robert Stevens v. Corelogic, Inc.

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
ROBERT STEVENS; STEVEN VANDEL, No. 16-56089
individually and on behalf of all
others similarly situated, D.C. No.
Plaintiffs-Appellants, 3:14-cv-01158-
BAS-JLB
v.
CORELOGIC, INC., a Delaware ORDER AND
Corporation, AMENDED
Defendant-Appellee. OPINION
Appeal from the United States District Court
for the Southern District of California
Cynthia A. Bashant, District Judge, Presiding
Argued and Submitted November 6, 2017
Pasadena, California
Filed June 20, 2018
Amended August 6, 2018
Before: A. Wallace Tashima and Marsha S. Berzon,
Circuit Judges, and Robert E. Payne,* District Judge.
*
The Honorable Robert E. Payne, United States District Judge for the
Eastern District of Virginia, sitting by designation.
2 STEVENS V. CORELOGIC
Order;
Opinion by Judge Berzon
SUMMARY**
Copyright Law
The panel filed: (1) an order denying a petition for panel
rehearing, rejecting on behalf of the court a petition for
rehearing en banc, and amending an opinion; and (2) an
amended opinion in a copyright case.
In its amended opinion, the panel affirmed the district
court’s grant of summary judgment in favor of CoreLogic,
Inc., on professional real estate photographers’ claims that
CoreLogic removed copyright management information from
their photographs and distributed their photographs with the
copyright management information removed, in violation of
17 U.S.C. § 1202(b)(1)–(3), a part of the Digital Millennium
Copyright Act.
The photographers alleged that CoreLogic’s Multiple
Listing Services software removed copyright management
information metadata from their photographs. The panel held
that § 1202(b) requires a showing that the defendant knew the
prohibited act would “induce, enable, facilitate, or conceal”
infringement. The plaintiff must make an affirmative
showing, such as by demonstrating a past “pattern of
conduct” or “modus operandi,” that the defendant was aware
**
This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
STEVENS V. CORELOGIC 3
or had reasonable grounds to be aware of the probable future
impact of its actions. The panel concluded that the
photographers did not offer evidence to satisfy this mental
state requirement because they did not provide evidence from
which one could infer that future infringement was likely,
albeit not certain, to occur as a result of the removal or
alteration of copyright management information.
The panel affirmed the district court’s rulings regarding
discovery and costs.
COUNSEL
Darren J. Quinn (argued), Law Offices of Darren J. Quinn,
Del Mar, California; Kirk B. Hulett, Hulett Harper Stewart
LLP, San Diego, California; Joel B. Rothman, Schneider
Rothman Intellectual Property Law Group PLLC, Boca
Raton, Florida; for Plaintiffs-Appellants.
Daralyn Jeannine Durie (argued), Joseph C. Gratz, and
Michael A. Feldman, Durie Tangri LLP, San Francisco,
California; for Defendant-Appellee.
4 STEVENS V. CORELOGIC
ORDER
The panel has unanimously voted to deny Appellants’
petition for panel rehearing. Judge Berzon has voted to deny
the petition for rehearing en banc. Judge Payne and Judge
Tashima recommend denial of the petition for rehearing en
banc. The full court has been advised of the petition for
rehearing en banc, and no judge has requested a vote on
whether to rehear the matter en banc. Fed. R. App. P. 35.
The petition for panel rehearing is denied and the petition
for rehearing en banc is rejected.
The opinion is amended as follows: On page 11 of the slip
opinion, “or had reasonable grounds to be aware” is inserted
after “that the defendant was aware.”
Appellants’ motion to take judicial notice is denied as
moot.
OPINION
BERZON, Circuit Judge:
Residential real estate sales today depend largely on
online sites displaying properties for sale. Plaintiffs Robert
Stevens and Steven Vandel (“the Photographers”) are
professional real estate photographers who take photographs
of listed properties and license them to real estate agents.
The real estate agents, in turn, upload such photographs to
Multiple Listing Services (“MLS”) — computerized
STEVENS V. CORELOGIC 5
databases of listed properties — using Defendant
CoreLogic’s software.
In this action against CoreLogic, the Photographers allege
that CoreLogic removed copyright management information
from their photographs and distributed their photographs with
the copyright management information removed, in violation
of 17 U.S.C. § 1202(b)(1)–(3). We affirm the grant of
summary judgment in favor of CoreLogic.
FACTS AND PROCEEDINGS BELOW
A. Metadata
Stevens and Vandel are hired by real estate agents to take
digital photographs of houses for sale. The Photographers
retain the copyright in those photographs and license them to
the agents. Like most digital photographs, at least some of
Stevens’ and Vandel’s photographs contain metadata — i.e.,
data about the image file itself. Metadata is not visible on the
face of the image. Rather, it is either embedded in the digital
file or stored outside the image file, such as in a “sidecar”
file, and can be viewed using computer programs.
Some metadata is generated automatically by cameras.
The Exchangeable Image File Format (“EXIF”) is used by
virtually all digital cameras to store information about the
settings used to capture a digital image. EXIF information
can include the make, model, and serial number of the camera
taking the photograph; the shutter speed; the aperture
settings; light sensitivity; the focal length of the lens; and
even, in some cases, the location at which the photo was
captured. Essentially, EXIF metadata provides information
6 STEVENS V. CORELOGIC
about when the image was taken and under what technical
conditions.
Other metadata may be added manually, either by
programming the camera or by adding information after
taking the picture, using photo editing software. Such
metadata is often stored in IPTC format, named for the
International Press Telecommunications Council, which
developed metadata standards to facilitate the exchange of
news. IPTC metadata can include, for example, the title of
the image, a caption or description, keywords, information
about the photographer, and copyright restrictions. It may be
used to check copyright information, to sort images, and to
provide accurate search results in an image database or search
engine. A small number of fields such as Author/Creator,
Copyright, and Caption/Description exist in both EXIF and
IPTC formats.
Copyright law restricts the removal or alteration of
copyright management information (“CMI”) — information
such as the title, the author, the copyright owner, the terms
and conditions for use of the work, and other identifying
information set forth in a copyright notice or conveyed in
connection with the work. See 17 U.S.C. § 1202(b)–(c). Both
EXIF and IPTC metadata can contain “copyright
management information.”
B. CoreLogic Software
CoreLogic is a California-based corporation that develops
and provides software to Multiple Listing Services. Known
as one of the “Big 3” real estate software vendors nationally,
CoreLogic currently markets, or has previously marketed,
several MLS software platforms, including Matrix, InnoVia,
STEVENS V. CORELOGIC 7
Fusion, MLXchange, Tempo 4, and Tempo 5. The
Photographers allege that CoreLogic’s software removed
CMI metadata from their photographs, in violation of
17 U.S.C. § 1202(b).
Because image files can be very large, CoreLogic’s MLS
software resizes or “downsamples” images. Downsampling
entails creating and saving a copy of an uploaded image in a
smaller number of pixels and deleting the original image; the
process reduces storage size, facilitates computer display, and
helps images load faster on web pages.
The image processing aspect of CoreLogic’s software was
not developed by CoreLogic entirely on its own. Like
virtually all software, CoreLogic’s software incorporated
“libraries” — pre-written code that can be used by a computer
program and that enables software to develop in a modular
fashion. These libraries are unable to read EXIF data from
image files or to write EXIF data to image files. Thus, when
images are copied or resized using the code from these pre-
existing libraries, metadata attached to those images is not
retained.1
1
It is not uncommon for image processing software to fail to preserve
metadata. Tests conducted by the Embedded Metadata Group in 2015
revealed that, of fifteen social media websites studied, eight preserved
EXIF metadata and seven, including, Facebook, Instagram, and Twitter,
did not. Some image-processing libraries, however, such as
“ImageMagick,” do read and write EXIF data, and thus transfer EXIF
metadata to the new image file when resizing.
8 STEVENS V. CORELOGIC
The Photographers2 filed this action in May 2014.
Significantly, the dispute is limited to metadata. The
Photographers do not allege that CoreLogic’s software
removed visible CMI, such as digital watermarks, from their
photographs, and indeed, CoreLogic’s software does not
detect, recognize, or remove visible CMI. Cf. Murphy v.
Millennium Radio Grp. LLC, 650 F.3d 295, 305 (3d Cir.
2011) (imposing liability on a defendant who cropped out the
photographer’s name from the “gutter” copyright credit
before posting a photograph online).
After receiving the Photographers’ initial complaint,
CoreLogic modified its software to ensure that EXIF
metadata is copied and restored to images processed by
CoreLogic’s MLS software. These modifications were made
within a few months of receiving the initial complaint,
although testing and installation of the revised version on all
MLSs using CoreLogic software took several more months.
The Photographers contend that, even after these changes,
CoreLogic software continues to remove IPTC metadata.
2
Stevens’ company, Affordable Aerial Photography, was named as
an additional plaintiff in the amended complaint. Affordable Aerial
Photograph did not, however, file a timely notice of appeal from the
district court’s July 5, 2016 judgment: The Notice of Appeal filed on July
29, 2016 identified only Stevens and Vandel as appellants. An amended
notice of appeal was filed several months later, on January 26, 2017, and
included Affordable Aerial Photography. That notice of appeal was
untimely as to the July 5, 2016 judgment. See Fed. R. App. P. 4(a)(1).
We therefore lack jurisdiction to consider the appeal by Affordable Aerial
Photography as it relates to the July 5, 2016 judgment. The amended
notice of appeal was, however, timely as to the January 11, 2017 order
denying the Photographers’ motion to re-tax costs, and Affordable Aerial
Photography is therefore properly a party as to that portion of the appeal.
STEVENS V. CORELOGIC 9
In addition to providing MLS software — which, again,
real estate agents use to share information about properties
with other agents — CoreLogic also operates the Partner
InfoNet program, which allows MLSs to license their
aggregated real estate listing data to mortgage lenders and
servicers, in exchange for a share of the licensees’ revenue.
CoreLogic used photographs taken and owned by the
Photographers on Partner InfoNet products.
After the discovery deadline, but before all discovery
disputes were resolved, Core Logic filed a motion for
summary judgment. The district court granted summary
judgment in favor of CoreLogic and denied as moot the
Photographers’ motion to compel the production of additional
documents.
After entry of judgment, CoreLogic filed a Bill of Costs,
to which the Photographers objected. The district court
denied the Photographers’ motion to re-tax costs with respect
to witness fees for CoreLogic corporate employees. This
timely appeal followed.
DISCUSSION
A. Violation of 17 U.S.C. § 1202(b)
The Photographers allege that CoreLogic’s software
removed CMI metadata, in violation of 17 U.S.C.
§ 1202(b)(1), and that CoreLogic distributed images knowing
that copyright management information was removed, in
violation of 17 U.S.C. § 1202(b)(3). Reviewing de novo the
district court’s decision to grant summary judgment to
CoreLogic, see Perfect 10, Inc. v. Giganews, Inc., 847 F.3d
10 STEVENS V. CORELOGIC
657, 665 (9th Cir. 2017), we affirm the grant of summary
judgment.
1. Section 1202(b) Requires an Affirmative
Showing That the Defendant Knew the
Prohibited Act Would “Induce, Enable,
Facilitate, or Conceal” Infringement
Section 1202(b)(1) provides: “No person shall, without
the authority of the copyright owner or the law . . .
intentionally remove or alter any copyright management
information . . . knowing, or . . . having reasonable grounds
to know, that it will induce, enable, facilitate, or conceal an
infringement of any” copyright. 17 U.S.C. § 1202(b)(1).
Section 1202(b)(3) provides: “No person shall, without the
authority of the copyright owner or the law . . . distribute,
import for distribution, or publicly perform works, copies of
works, or phonorecords, knowing that copyright management
information has been removed or altered without authority of
the copyright owner or the law, knowing, or . . . having
reasonable grounds to know, that it will induce, enable,
facilitate, or conceal an infringement of any” copyright. Id.
§ 1202(b)(3).3 Both provisions thus require the defendant to
3
The Photographers’ complaint also alleges a violation of 17 U.S.C.
§ 1202(b)(2). Section 1202(b)(2) refers to the “distribut[ion] or import for
distribution [of] copyright management information knowing that the
copyright management information has been removed or altered without
authority of the copyright owner or the law.” 17 U.S.C. § 1202(b)(2)
(emphasis added). The Photographers do not specifically allege any
instances involving the distribution of altered CMI separate from the
distribution of the copyrighted photographs. As the elements of the two
statutory provisions are otherwise indistinguishable, the Photographers
STEVENS V. CORELOGIC 11
possess the mental state of knowing, or having a reasonable
basis to know, that his actions “will induce, enable, facilitate,
or conceal” infringement.
The Photographers have not offered any evidence to
satisfy that mental state requirement.4 Their primary
argument is that, because one method of identifying an
infringing photograph has been impaired,5 someone might be
able to use their photographs undetected. That assertion rests
on no affirmative evidence at all; it simply identifies a
general possibility that exists whenever CMI is removed.
have not plausibly stated a claim under Section 1202(b)(2) different from
their claim under Section 1202(b)(3). We therefore discuss in the text
only the Section 1202(b)(3) claim.
4
As this reason is a sufficient basis for concluding that the
Photographers’ claims fail, we do not consider whether CoreLogic
“intentionally” removed CMI, whether the Photographers presented
sufficient evidence that the photographs contained CMI at the time they
were uploaded, whether the Photographers impliedly licensed the removal
of CMI, or whether CoreLogic, as a software developer, can be liable for
third parties’ use of its software.
5
As noted, CoreLogic’s software does preserve visible watermarks,
which Stevens and Vandel testified they sometimes use to identify their
photographs. Experts advise that watermarks offer a more reliable way of
indicating copyright protection than metadata. See Bert P. Krages, Legal
Handbook for Photographers: The Rights and Liabilities of Making and
Selling Images 85 (4th ed. 2017) (recommending that photographers “put
the copyright management information on the face of the image, such as
in a watermark, rather than rely solely on information contained in
metadata” because the use of image editing software to clone over a
watermark is more likely to be seen as intentional than the removal of
metadata).
12 STEVENS V. CORELOGIC
As we interpret Section 1202(b), this generic approach
won’t wash. It is a fundamental principle of statutory
interpretation that we must “give effect, if possible, to every
clause and word of a statute,” Montclair v. Ramsdell,
107 U.S. 147, 152 (1883), “so that no part will be inoperative
or superfluous, void or insignificant,” Corley v. United States,
556 U.S. 303, 314 (2009); see also Hibbs v. Winn, 542 U.S.
88, 101 (2004); Astoria Fed. Savs. & Loan Ass’n v. Solimino,
501 U.S. 104, 112 (1991). To avoid superfluity, the mental
state requirement in Section 1202(b) must have a more
specific application than the universal possibility of
encouraging infringement; specific allegations as to how
identifiable infringements “will” be affected are necessary.
At the same time, as the statute is written in the future
tense, the Photographers need not show that any specific
infringement has already occurred. Also, recognizing that
“nothing is completely stable, no plan is beyond alteration,”
we have previously observed that statutes requiring
knowledge that a future action “will” occur do not “require
knowledge in the sense of certainty as to a future act.”
United States v. Todd, 627 F.3d 329, 334 (9th Cir. 2010).
Rather, knowledge in the context of such statutes signifies “a
state of mind in which the knower is familiar with a pattern
of conduct” or “aware of an established modus operandi that
will in the future cause a person to engage in” a certain act.
Id. Applying that concept here, we hold that a plaintiff
bringing a Section 1202(b) claim must make an affirmative
showing, such as by demonstrating a past “pattern of
conduct” or “modus operandi”, that the defendant was aware
or had reasonable grounds to be aware of the probable future
impact of its actions.
STEVENS V. CORELOGIC 13
Our conclusion about the import of the “induce[d],
enable[d], facilitate[d], or conceal[ed]” prong is supported by
the legislative history of Section 1202. That provision was
enacted to implement obligations of parties to the WIPO
Copyright Treaty (“WCT”) and the WIPO Performances and
Phonograms Treaty. See S. Rep. No. 105-190, at 5, 9 (1998).
The initial draft of the WCT provision regarding CMI
provided:
Contracting parties shall make it unlawful for
any person knowingly . . . (i) to remove or
alter any electronic rights management
information without authority; [or] (ii) to
distribute, import for distribution or
communicate to the public, without authority,
copies of works from which electronic rights
management information has been removed or
altered without authority.
World Intellectual Property Organization [WIPO], Basic
Proposal for the Substantive Provisions of the Treaty on
Certain Questions Concerning the Protection of Literary and
Artistic Works to Be Considered by the Diplomatic
Conference, art. 14(1), WIPO Doc. CRNR/DC/4 (Aug. 30,
1996).
In response to requests from delegates that the provision
be modified to require a connection to an infringing purpose,
the provision was redrafted as follows:
Contracting Parties shall provide adequate and
effective legal remedies against any person
knowingly performing any of the following
acts knowing or, with respect to civil remedies
14 STEVENS V. CORELOGIC
having reasonable grounds to know, that it
will induce, enable, facilitate or conceal an
infringement of any right covered by this
Treaty or the Berne Convention: (i) to remove
or alter any electronic rights management
information without authority; (ii) to
distribute, import for distribution, broadcast or
communicate to the public, without authority,
works or copies of works knowing that
electronic rights management information has
been removed or altered without authority.
WIPO Copyright Treaty art. 12, Dec. 20 1996 (emphasis
added). The revision thus makes clear that the “induce,
enable, facilitate or conceal” requirement is intended to limit
liability in some fashion — specifically, to instances in which
the defendant knows or has a reasonable basis to know that
the removal or alteration of CMI or the distribution of works
with CMI removed will aid infringement.
When Congress was considering the WIPO Copyright
Treaties Implementation Act — a part of the Digital
Millennium Copyright Act (“DMCA”) that included the new
Section 1202 — the Register of Copyrights emphasized that
Section 1202’s provisions “do not apply to those who act
innocently. . . . Liability for the removal or alteration of
information requires the actor to know or have reason to
know that his acts ‘will induce, enable, facilitate or conceal’
infringement.” WIPO Copyright Treaties Implementation
Act, and Online Copyright Liability Limitation Act: Hearing
Before the H. Subcomm. on Courts and Intellectual Property
of the H. Comm. on the Judiciary, 105th Cong. 51 (1997)
(statement of Marybeth Peters, Register of Copyrights,
Copyright Office of the United States).
STEVENS V. CORELOGIC 15
In short, to satisfy the knowledge requirement, a plaintiff
bringing a Section 1202(b)(1) claim must offer more than a
bare assertion that “when CMI metadata is removed,
copyright infringement plaintiffs . . . lose an important
method of identifying a photo as infringing.” Instead, the
plaintiff must provide evidence from which one can infer that
future infringement is likely, albeit not certain, to occur as a
result of the removal or alteration of CMI.
2. The Photographers Have Failed to Make the
Required Affirmative Showing
The Photographers have not offered any specific evidence
that removal of CMI metadata from their real estate
photographs will impair their policing of infringement. There
are no allegations, for example, of a “pattern of conduct” or
“modus operandi” involving policing infringement by
tracking metadata. Todd, 627 F.3d at 334. Indeed, the
evidence presented cuts against any inference that CMI
metadata is of any practical significance to the Photographers
in policing copyright infringement of their images.
The Photographers have not, for example, averred that
they have ever used CMI metadata to prevent or detect
copyright infringement, much less how they would do so.
Vandel testified that, before this lawsuit began, he had never
“looked at any metadata information on any photograph in an
MLS system.” On the only two occasions Vandel became
aware of unauthorized use of his photographs, he learned
about the unauthorized use from the real estate agent who
commissioned the photographs. The agent saw the image
elsewhere and contacted Vandel to ask if he had permitted the
use. Stevens similarly testified that he had “[n]ever tried to
download a photo off an MLS listing . . . and look at its
16 STEVENS V. CORELOGIC
properties, its metadata,” that he “d[id]n’t think you can pull
up metadata off of an MLS listing,” and that he “didn’t even
realize you could click on a picture off the Internet, right-
click it, and get metadata off of it.” The testimony of both
Stevens and Vandel undermines any ostensible relationship
between the removal of CMI metadata and their policing of
infringement.
Nor have the Photographers brought forward any
evidence indicating that CoreLogic’s distribution of real
estate photographs ever “induce[d], enable[d], facilitate[d], or
conceal[ed]” any particular act of infringement by anyone, let
alone a pattern of such infringement likely to recur in the
future. They identify no instance in which the removal of
CMI metadata from any photograph “induce[d], enable[d],
facilitate[d] or conceal[ed] an infringement.”6 Moreover, a
party intent on using a copyrighted photograph undetected
can itself remove any CMI metadata, precluding detection
through a search for the metadata. So on the record here, one
cannot plausibly say that removal by a third party “will”
make it easier to use a copyrighted photograph undetected,
using “will” in the predictive sense we have indicated.
Because the Photographers have not put forward any
evidence that CoreLogic knew its software carried even a
substantial risk of inducing, enabling, facilitating, or
6
In the time it has operated its MLS software, CoreLogic has only
once received a DMCA takedown notice from a real estate photographer.
17 U.S.C. § 512(c). CoreLogic promptly responded by removing the
allegedly unauthorized and infringing copies. There is no evidence that
that photographer used metadata to identify the allegedly infringing
copies, that her photograph even contained metadata, or that the
infringement identified had anything to do with removal or alteration of
metadata.
STEVENS V. CORELOGIC 17
concealing infringement, let alone a pattern or probability of
such a connection to infringement, CoreLogic is not liable for
violating 17 U.S.C. § 1202(b).
B. Discovery Rulings
The Photographers also appeal the district court’s denial
as moot of their motion to compel the production of
documents, as well as the court’s related failure to address
their Rule 56(d) request. See Fed. R. Civ. P. 56(d).7 We treat
the district court’s failure specifically to address the Rule
56(d) request as an implicit denial. See Kennedy v. Applause,
Inc., 90 F.3d 1477, 1482 (9th Cir. 1996).8
Before discovery closed in September 2015, the
Photographers filed motions to compel the production of
certain documents and certain supplemental responses to
interrogatories. The district court granted in part and denied
in part those motions, ordering CoreLogic to identify in a
privilege log any responsive documents it claimed were
privileged. CoreLogic complied, serving an initial privilege
log consisting of 1,049 entries, and later a revised privilege
log.
7
Federal Rule of Civil Procedure 56(d) provides: “If a nonmovant
shows by affidavit or declaration that, for specified reasons, it cannot
present facts essential to justify its opposition [to a motion for summary
judgment], the court may: (1) defer considering the motion or deny it;
(2) allow time to obtain affidavits or declarations or to take discovery; or
(3) issue any other appropriate order.”
8
Kennedy characterizes as an implicit denial a failure expressly to
address a Rule 56(f) motion. Federal Rule of Civil Procedure 56(d) was,
until December 1, 2010, codified as Federal Rule of Civil Procedure 56(f).
18 STEVENS V. CORELOGIC
CoreLogic filed a motion for summary judgment before
the district court ruled on the privilege claims. In addition to
a memorandum of points and authorities opposing
CoreLogic’s motion for summary judgment on the merits,
counsel for the Photographers filed a Rule 56(d) declaration
opposing summary judgment on the ground that the
Photographers planned to move to compel the production of
documents relevant to their claims that they believed not
privileged. The declaration asserted that the documents were
“likely to be directly relevant to each of the elements in
17 U.S.C. § 1202, especially the mental state requirement of
‘knowing,’” and requested that the court defer consideration
of the summary judgment motion or extend the time for
discovery.
The photographers subsequently moved to compel the
production of 603 e-mails and instant messages identified in
the revised privilege log. The district court, however, granted
summary judgment to CoreLogic before ruling on the motion
to compel, and then, in the summary judgment order, denied
the discovery motion as moot.
District court discovery rulings denying a motion to
compel discovery are ordinarily reviewed for abuse of
discretion. See Hallett v. Morgan, 296 F.3d 732, 751 (9th
Cir. 2002); see also Morton v. Hall, 599 F.3d 942, 945 (9th
Cir. 2010); Qualls ex rel. Qualls v. Blue Cross of Cal., Inc.,
22 F.3d 839, 844 (9th Cir. 1994). When the district court
denies a motion to compel additional discovery as moot
without considering its merits, however, the district court
does not exercise any substantive discretion about the scope
of discovery, so we review the denial of discovery de novo.
Clark v. Capital Credit & Collection Servs., Inc., 460 F.3d
STEVENS V. CORELOGIC 19
1162, 1178 (9th Cir. 2006); Garrett v. City & Cty. of San
Francisco, 818 F.2d 1515, 1518 n.3, 1519 (9th Cir. 1987).
Similarly, if a district court implicitly denies a Rule 56(d)
motion by granting summary judgment without expressly
addressing the motion, that omission constitutes a failure “to
exercise its discretion with respect to the discovery motion,”
and the denial is reviewed de novo. Garrett, 818 F.2d at
1518 n.3, 1519; see also Margolis v. Ryan, 140 F.3d 850, 853
(9th Cir. 1998); Kennedy, 90 F.3d at 1482; Qualls, 22 F.3d at
844. We have previously allowed that explanations for
denials of Rule 56(d) request “need not be explicitly stated”
when “the information sought . . . would not have shed light
on any of the issues upon which the summary judgment
decision was based.” Qualls, 22 F.3d at 844. But when the
plaintiff requests additional discovery pursuant to Rule 56(d)
and the materials that a “motion to compel sought to elicit”
are relevant to the basis for the summary judgment ruling,
district courts should provide reasons for denying the
discovery motion and the Rule 56(d) request. See Garrett,
818 F.2d at 1519. In this case, the communications that the
Photographers sought could have “shed light” on whether, for
example, CoreLogic intentionally removed CMI or knew
CMI was removed without authorization — issues relevant to
the district court’s summary judgment ruling, although not to
our basis for affirming that ruling — and should have been
addressed.
Nonetheless, reviewing de novo the denials of the motion
to compel and of the Rule 56(d) request, we affirm. As to the
motion to compel, there is no indication that any of the
documents sought are “relevant,” as required under Rule
20 STEVENS V. CORELOGIC
26(b)(1),9 to what we have held to be the dispositive issue —
whether CoreLogic knew its actions would “induce, enable,
facilitate, or conceal infringement.”10 The district court
directed that the motion to compel include “[a] statement as
to why the discovery is needed.” The sole explanation
offered for why the documents were needed was that they
would show CoreLogic knew its software removed EXIF
metadata before the litigation began, and knew its software
continues to remove IPTC metadata, even after the software
was modified to preserve EXIF metadata after this lawsuit
was filed. As the Photographers have not made any showing
that the documents listed in the privilege log are relevant to
the dispositive question — whether CoreLogic’s software
will “induce, enable, facilitate, or conceal” any act of
infringement — we affirm the denial of the motion to compel.
The denial of the Rule 56(d) request was proper for
similar reasons. Rule 56(d) provides “a device for litigants to
9
Rule 26(b)(1) provides: “Unless otherwise limited by court order,
. . . [p]arties may obtain discovery regarding any nonprivileged matter that
is relevant to any party’s claim or defense and proportional to the needs
of the case, considering the importance of the issues at stake in the action,
the amount in controversy, the parties’ relative access to relevant
information, the parties’ resources, the importance of the discovery in
resolving the issues, and whether the burden or expense of the proposed
discovery outweighs its likely benefit.” Fed. R. Civ. P. 26(b)(1).
10
According to the Photographers’ motion to compel, the documents
at issue fell into three categories: (1) “Product Development and
Modification” documents regarding CoreLogic’s development and
modification of the CoreLogic software at issue; (2) “Sales Pitches and
Internal Discussions” emails and instant messages regarding this lawsuit;
and (3) “Business Matters” emails and instant messages between non-
attorneys regarding “images incorporated into a product” and “contract
language.”
STEVENS V. CORELOGIC 21
avoid summary judgment when they have not had sufficient
time to develop affirmative evidence.” United States v.
Kitsap Physicians Serv., 314 F.3d 995, 1000 (9th Cir. 2002).
A party seeking additional discovery under Rule 56(d) must
“explain what further discovery would reveal that is ‘essential
to justify [its] opposition’ to the motion[] for summary
judgment.” Program Eng’g, Inc. v. Triangle Publ’ns, Inc.,
634 F.2d 1188, 1194 (9th Cir. 1980) (first alteration in
original).
This showing cannot, of course, predict with accuracy
precisely what further discovery will reveal; the whole point
of discovery is to learn what a party does not know or,
without further information, cannot prove. See, e.g., Pac.
Fisheries Inc. v. United States, 484 F.3d 1103, 1111 (9th Cir.
2007) (“[T]he purpose of discovery is to aid a party in the
preparation of its case . . . .”); Fed. R. Civ. P. 26(b) advisory
committee’s note to 1946 amendment) (“The purpose of
discovery is to allow a broad search for facts . . . or any other
matters which may aid a party in the preparation or
presentation of his case.”). But for purposes of a Rule 56(d)
request, the evidence sought must be more than “the object of
pure speculation.” California v. Campbell, 138 F.3d 772,
779–80 (9th Cir. 1998) (citation omitted). A party seeking to
delay summary judgment for further discovery must state
“what other specific evidence it hopes to discover [and] the
relevance of that evidence to its claims.” Program Eng’g,
634 F.2d at 1194 (emphasis added). In particular, “[t]he
requesting party must show [that]: (1) it has set forth in
affidavit form the specific facts it hopes to elicit from further
discovery; (2) the facts sought exist; and (3) the sought-after
facts are essential to oppose summary judgment.” Family
22 STEVENS V. CORELOGIC
Home & Fin. Ctr., Inc. v. Fed. Home Loan Mortg. Corp.,
525 F.3d 822, 827 (9th Cir. 2008) (emphasis added).11
The Photographers did not comply with those
requirements here. Extensive discovery had taken place
before the district court ruled on CoreLogic’s motion for
summary judgment. The Photographers had taken
depositions of 16 CoreLogic employees, served and received
responses to 42 interrogatories, and served 114 requests for
production of documents. The additional information sought
was a general request for all allegedly privileged documents
where no attorney was listed as an author or recipient,
coupled with a bare assertion that the “documents are likely
to be directly relevant to each of the elements in 17 U.S.C.
§ 1202, especially the mental state requirement of
‘knowing.’”
A request at that level of generality is insufficient for
Rule 56(d) purposes. The Photographers did not in their Rule
56(d) declaration enumerate any “specific facts” they hoped
to elicit from further discovery, Family Home & Fin. Ctr.,
525 F.3d at 827, or “provide any basis or factual support for
[their] assertions that further discovery would lead” to those
facts, Margolis, 140 F.3d at 854. And, as we have explained,
the only specific explanation in the record — which appeared
in the motion to compel, not in the Rule 56(d) declaration —
indicates that the information sought would not illuminate the
determinative inquiry, whether CoreLogic’s software will
“induce, enable, facilitate, or conceal an infringement.”
11
Garrett, on which the Photographers rely, is not to the contrary.
Garrett emphasized that the plaintiff there “made clear the information
sought, did not seek broad additional discovery, . . . and indicated the
purpose for which this information was sought.” 818 F.2d at 1518–19.
STEVENS V. CORELOGIC 23
We therefore affirm the denial of the Photographers’
request to the district court to delay a decision on summary
judgment and permit additional discovery.
C. Motion to Retax Costs
Finally, the district court did not err in awarding fees for
corporate witnesses as costs and denying the Photographers’
motion to retax costs.
Rule 54 permits prevailing parties to recover costs other
than attorney’s fees, unless otherwise provided. Fed. R. Civ.
P. 54(d)(1). The Photographers urge that corporate directors
or officers may not recover the witness fees set by 28 U.S.C.
§ 1821 when appearing in support of the corporate party.12
As a general rule, parties may not recover witness fees for
their own attendance. See, e.g., Barber v. Ruth, 7 F.3d 636,
646 (7th Cir. 1993), superseded on other grounds by
amendment to Federal Rules of Civil Procedure, as
recognized in Little v. Mitsubishi Motors N. Am., Inc., 514
F.3d 699, 701–02 (7th Cir. 2008). The expenses of corporate
directors or officers may, however, be taxable, even when
those individuals are testifying on behalf of a corporate party
to the suit, provided “[n]o recovery . . . [is] sought from [the
officers] individually.” See Kemart Corp. v. Printing Arts
Research Labs., Inc., 232 F.2d 897, 901 (9th Cir. 1956)
(citation omitted); 10 Charles A. Wright & Arthur R. Miller,
Federal Practice and Procedure § 2678 (3d ed. 1998) (“The
expenses of witnesses who are themselves parties normally
are not taxable. For example, real parties in interest or parties
suing in a representative capacity are not entitled to fees or
12
Section 1821 governs the attendance fees for witnesses.
24 STEVENS V. CORELOGIC
allowances as witnesses. The expenses of a director or
officer of a corporation who is not personally involved in the
litigation may be taxable, however, even if that individual is
testifying on behalf of the organization and the latter is a
party to the suit.”). “The allowance or disallowance of items
of costs is determined by statute, rule, order, usage, and
practice of the instant court.” Kemart, 232 F.2d at 899.
Southern District of California Local Rule 54.1(b)(4)(c)
specifically provides that “[w]itness fees for officers and
employees of a corporation” may be recoverable as costs “if
they are not parties in their individual capacities.” S.D. Cal.
Civ. R. 54.1(b)(4)(c). During the course of this litigation, the
Photographers took one Rule 30(b)(6) deposition of
CoreLogic as a corporate entity, at which nine employees
designated by CoreLogic testified,13 and seven depositions of
CoreLogic officers or managing agents. Thus, sixteen
CoreLogic employees testified and were paid $40 per day, in
accordance with 28 U.S.C. § 1821, for a total of $640 in
witness fees. The district court did not abuse its discretion in
relying upon Local Rule 54.1 to allow and tax as costs the
witness fees for CoreLogic’s corporate officers.
AFFIRMED.
13
A Rule 30(b)(6) deposition is “treated as a single deposition even
though more than one person may be designated to testify.” Fed. R. Civ.
P. 30(a) advisory committee’s note to 1993 amendment.