Paisley Park Enterprises, Inc. v. Boxill
U.S. District Court, District of Minnesota
Paisley Park Enterprises, Inc. v. Boxill
Trial Court Opinion
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
Paisley Park Enterprises, Inc. and Comerica
Bank & Trust, N.A. as Personal
Representative for the Estate of Prince
Rogers Nelson,
Plaintiffs,
Case No. 17-cv-1212 (WMW/TNL)
v.
George Ian Boxill, Rogue Music Alliance,
LLC, Deliverance, LLC, David Staley,
Gabriel Solomon Wilson, Brown & Rosen, ORDER
LLC and Sidebar Legal, PC,
Defendants,
Lora Mitchell Friedemann and Anne R. Rondoni Tavernier, Fredrikson & Byron, PA,
200 South Sixth Street, Suite 4000, Minneapolis, MN 55402 (for Plaintiffs);
Paul Allen Godfread, Godfread Law Firm, 6043 Hudson Road, Suite 305, Woodbury,
MN 55125 (for Defendants George Ian Boxill, Rogue Music Alliance, LLC, Deliverance,
LLC, David Staley, and Gabriel Solomon Wilson);
M. Gregory Simpson, Meagher & Geer, PLLP, 33 South Sixth Street, Suite 4400,
Minneapolis, MN 55402 (for Defendant Brown and Rosen LLC); and
No appearance by or on behalf of Sidebar Legal PC.
This matter is before the Court on Plaintiffs’ Motion to Compel Discovery from
Sidebar Legal, PC (ECF No. 417). For the reasons set forth below, the Court will grant in
part and deny in part the motion.
I. BACKGROUND
Plaintiff Comerica Bank & Trust, N.A. is the personal representative for the estate
of the late internationally known musician Prince Rogers Nelson (“Prince” and “Prince
Estate”). Third Amend. Compl. ¶ 2 (ECF No. 262). The Prince Estate owns Plaintiff Paisley
Park Enterprises, Inc. Id. The Prince Estate has an interest in various songs created by
Prince, including those not released to the public. Id. at ¶ 3.
On April 14, 2017, Plaintiffs filed suit in state court against Defendant George Ian
Boxill, a sound engineer who worked with Prince previously, alleging that Boxill took
tracks of certain songs that he worked on with Prince and that Boxill edited, and released
those songs without the Prince Estate’s permission. (ECF No. 2, p. 3-5). Boxill removed
the lawsuit to federal court on April 18, 2017. (ECF No. 1). Plaintiffs later filed an amended
complaint in which they named Sidebar Legal, PC (“Sidebar”) as a defendant. Third
Amend. Compl. ¶ 18 (ECF No. 262). Plaintiffs allege that Sidebar induced, encouraged,
contributed to, and materially participated in the infringement of the Prince Estate’s
intellectual property and tortuously interfered with a confidentiality agreement between
Prince and Boxill. Id. at ¶ 25. Sidebar’s CEO, sole corporate officer, and its registered agent
for service of process is Matthew Wilson. (ECF No. 421-4, p. 60).
Plaintiffs attempted to serve the complaint and a document subpoena on Sidebar at
its registered business address of 890 Cypress Avenue, Redding, California 96001. (ECF
No. 421-4, pp. 60, 92). Sidebar also lists this address as its business address on its website.
(ECF No. 421-4, p. 57). Plaintiffs discovered, however, that Sidebar no longer operates at
this address. (ECF No. 421-4, p. 92).
Plaintiffs then contacted Wilson by e-mail and asked that he provide an updated
address for Sidebar. (ECF No. 421-4, p. 92). Wilson did not respond to the e-mail. (ECF
No. 421, p. 4). Plaintiffs then located Wilson’s home address and served the complaint on
him there. (ECF No. 326). Sidebar did not answer the complaint and was found to be in
default. (ECF No. 341).
Following entry of default, Plaintiffs issued a revised subpoena for the production
of documents to Sidebar, asking it to produce those documents at a law firm in Redding.
(ECF No. 421-1, pp. 1-9). Because Sidebar still had not updated its registered address,
Plaintiffs again served the subpoena on Wilson at his home address. (ECF No. 421-4, p.
94). Approximately two weeks later, Sidebar responded to the subpoena, with a cover letter
listing the Cypress Avenue location as its business address. (ECF No. 421-4, p. 96). Sidebar
objected to the subpoena for multiple reasons, including improper service, failure to
provide witness fees and mileage, that the document requests were overly broad and
irrelevant, that the subpoena sought documents protected by the attorney-client and work
product privilege, and that the subpoena failed to allow a reasonable amount of time for its
response. (ECF No. 421-4, pp. 97-99). Sidebar produced no documents and did not respond
to Plaintiffs’ request for a meet and confer regarding its objections. (ECF Nos 421, p. 5,
421-4, p. 101).
Plaintiffs then filed a motion to compel compliance with the subpoena in the Eastern
District of California. See Order, Paisley Park Enterprises, Inc. v. Boxill, 19-mc-006, ECF
No. 9. That court transferred the motion to the District of Minnesota for consideration. Id.
The Court heard argument on this matter on February 5, 2019. Sidebar did not file a
responsive memorandum or otherwise appear at the hearing. Following argument from the
other parties, the Court took this matter under advisement.
II. ANALYSIS
Plaintiffs move to compel discovery from Sidebar. Rule 26 permits parties to
“obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim
or defense and proportional to the needs of the case[.]” Fed. R. Civ. P. 26(b)(1). Relevance
is “construed broadly to encompass any matter that bears on, or that reasonably could lead
to other matter that could bear on, any issue that is or may be in the case.” Oppenheimer
Fund, Inc. v. Sanders, 437 U.S. 340, 351(1978). To determine whether the discovery requested is proportional to the needs of the case, courts consider “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). This Court “has considerable discretion in granting or denying discovery requests[.]” Bredemus v. Int’l Paper Co.,252 F.R.D. 529, 534
(D.
Minn. 2008).
At the outset, the Court must consider whether it was appropriate for Plaintiffs to
obtain discovery from Sidebar by way of a Rule 45 subpoena. Typically, Rule 45
subpoenas are used to obtain documents or testimony from non-parties. First City, Texas-
Houston, N.A. v. Rafidain Bank, 197 F.R.D. 250, 255 n. 5 (S.D.N.Y. 2000), aff’d,281 F.3d 48
(2d Cir. 2002). Courts are split as to whether it is proper for a Rule 45 subpoena to be served on a party. Compare Hasbro, Inc. v. Serafino,168 F.R.D. 99, 100
(D. Mass. 1996) (holding documents sought from parties must be requested through Rule 34) with Badman v. Stark,139 F.R.D. 601
(M.D. Pa. 1991) (permitting service of Rule 45 subpoena on
party). The Court has not located a case in this district that addresses this issue directly.
The Court need not resolve this issue, however, because Sidebar is in default.
“Federal courts have consistently held that a defaulting defendant should be treated as a
non-party with respect to any discovery sought.” La Barbera v. Pass 1234 Trucking, Inc.,
No. 2004-cv-1364, 2008 WL 2564153*1 (E.D.N.Y. June 25, 2008). This is because defaulting parties “lose[] many of the rights of a party,” including the right to contest the factual allegations of the complaint. Jules Jordan Video, Inc. v. 144942 Canada, Inc.,617 F.3d 1146, 1159
(9th Cir. 2010). As a result, a party can obtain discovery from a defaulting party by way of a Rule 45 subpoena. Blazek v. Capital Recovery Assoc., Inc.,222 F.R.D. 360, 361-62
(E.D. Wisc. 2004).
The Court therefore turns to the merits of Plaintiffs’ motion. Plaintiffs seek
documents related to the release of the Prince music at issue in this lawsuit, work that
Sidebar performed for the other Defendants in this matter, and documents related to
Deliverance LLC, an entity that was created for the release of the Prince music. (ECF No.
421-1, pp. 6-9). There is no doubt that Plaintiffs’ requests are relevant to the issues
presented by this litigation. Sidebar was one of the primary entities responsible for the
release of the Prince EP and provided legal opinions to the other Defendants regarding the
release of the music. It was also a part owner of Deliverance LLC. Plaintiffs’ requests more
than satisfy the relevancy standard of Rule 26.
Furthermore, Sidebar has filed no response to Plaintiffs’ motion. On that basis alone,
it would be appropriate to order Sidebar to comply with the subpoena. Cf. Christensen v.
PennyMac Loan Services, LLC, 988 F. Supp. 2d 1036, 1042 (D. Minn. 2013) (collecting
cases where court concluded failure to respond to motion to dismiss warranted dismissal).
The Court will, however, consider the objections that Sidebar raised with Plaintiffs
regarding the subpoena.
Sidebar first contends that Plaintiffs did not it serve the subpoena properly. In
particular, it notes that the subpoena was “informally delivered to the residence of Matthew
Wilson.” (ECF No. 421-4, p. 97). Presumably, Sidebar is challenging the fact that the
subpoena was not delivered to its registered address, despite the fact it no longer appears
to operate from that address.
Federal Rule of Civil Procedure 45(b) allows service at any place in the United
States by any person not a party to the lawsuit who is over the age of 18. Courts previously
interpreted Rule 45(b) as requiring personal service. Western Resources, Inc. v. Union
Pacific R. Co., No. 00-2043, 2002 WL 1822432*2 (D. Kan. July 23, 2002). In recent years, however, courts “have departed from that view” and permitted alternative means of service. Boaz v. Federal Express Corp., 09-cv-2232,2010 WL 11601290
*2 (W.D. Tenn. June 21, 2010). Whether Rule 45 requires personal service turns primarily on the deciding court’s interpretation of “delivery” under Rule 45. The growing trend is for courts to permit “substitute service” of a Rule 45 subpoena, “so long as the method of service is reasonably calculated to provide timely, fair notice and an opportunity to object or file a motion to quash.” Fujikara Ltd. v. Finisar Corp., 15-mc-80110,2015 WL 5782351
*5 (N.D. Cal.
Oct. 5, 2015).
Rule 45 also “does not specify what constitutes personal service on a corporation in
the United States[.]” Sanchez Y Martin, SA de CV v. Dos Amigos, Inc., 17-cv-1943, 2018
WL 2387580*3 (S.D. Cal. May 24, 2018). Courts often rely on the service requirements of Federal Rule of Civil Procedure 4 to fill this gap. In re Grand Jury Subpoenas Issued to Thirteen Corps.,775 F.2d 43, 46
(2d Cir. 1985). Under Rule 4, a subpoena is properly served if delivered to “to an officer . . . authorized by appointment or by law to receive service of process and—if the agent is one authorized by statute and the statute so requires—by also mailing a copy [] to the [person to whom the subpoena is directed].” Fed. R. Civ. P. 4(h)(1)(B). Service may also be performed in any manner authorized under state law. Id. at 4(h)(1)(A). Consistent with Rule 4 relevant here, California law authorizes a party to serve a subpoena on a corporation by delivering to a designated agent or officer of the corporation. Cal. Code of Civ. Proc. § 416.10(a). California law also allows for alternative service when a designated agent cannot be found at the address designated for personal service of process. In such cases, the Court may order that the party effect service by delivering “one copy of the process for each defendant to be served, together with a copy of the order authorizing such service” to the California Secretary of State.Cal. Corp. Code § 1702
(a). The Secretary of State must then forward the service of process to the corporation’s principal executive office or the last designated agent for service of process.Id.
§ 1702(b). If no agent or address can be identified, then no additional action need be
taken by the Secretary of State. Id. Service is deemed complete on the 10th day after
delivery of the process to the Secretary of State. Id. § 1702(a).
In this case, Plaintiffs served the subpoena personally on Wilson, Sidebar’s only
corporate officer and registered agent, at the home address for Wilson. Though Plaintiffs
did not serve the subpoena at Sidebar’s registered address with the California Secretary of
State, that is only because Sidebar has not kept current its registered address, nor identified
any other address by which it could be served. As a result, if Plaintiffs could not serve
Sidebar at Wilson’s home address, then it likely would be impossible for them to ever serve
Sidebar. Moreover, as evidenced by Wilson’s response to the subpoena, it is apparent that
Plaintiffs effected service in a manner that allowed Sidebar fair notice and the “opportunity
to object or file a motion to quash.” Fujikara, 2015 WL 5782351 at *5. Essentially,
Plaintiffs did the all they could to ensure the subpoena was delivered personally to
Sidebar’s registered agent. The Court therefore concludes that Plaintiffs properly served
the subpoena on Sidebar.
Out of an abundance of caution, however, and to ensure there can be no further
argument regarding the adequacy of service, the Court will order Plaintiffs to re-serve
Sidebar in two different ways. First, the Court will order Plaintiffs to mail a copy of this
order, along with their subpoena, to Wilson’s home address. Second, the Court will order
Plaintiffs to serve a copy of this order and their subpoena through the California Secretary
of State, as provided by section 1702 of the California Corporations Code. Service through
each of these means will ensure that Sidebar cannot question in good faith the validity of
the process that Plaintiffs use in this matter, nor attempt to claim in good faith that it was
unaware of the Court’s order here.
Sidebar next objects to the subpoena on the ground that it “was not accompanied by
the required witness fee and mileage allowed by law.” (ECF No. 421-4, p. 97). This
argument is completely without merit. Though the Federal Rules of Civil Procedure require
the tendering of fees and mileage when a “subpoena requires that person’s attendance,” it
is well established that a subpoena compelling only the production of documents need not
be accompanied by such a tender because it does not require the appearance of the
subpoenaed person. Fed. R. Civ. 45(b)(1); Jackson v. Brinker, 91-471-C, 1992 WL 404537
*2 (S.D. Ind. Dec. 21, 1992). In addition, were this Sidebar’s primary reason for non-
compliance with the subpoena, it should have, at a minimum, sought relief from the Court
or raised this issue with Plaintiffs in the meet-and-confer session that they requested. The
Court will not excuse Sidebar from complying with the subpoena on this basis.
Sidebar also contends that Plaintiffs’ requests “are not reasonably related to any of
the claims or defenses asserted in the above-captioned lawsuit and are otherwise beyond
the scope of discovery as provided in Fed. R. Civ. P. 26(b).” (ECF No. 421-4, p. 97-98).
In particular, Sidebar argues that the requests are overly broad, do not relate to facts or
claims in the current pleadings, and not limited as to time frame. Sidebar fails, however, to
identify how each specific request is deficient or how Sidebar would be harmed if it were
required to respond. Mere statements like these constitute nothing more than boilerplate
objections that are insufficient to preserve the objecting party’s rights. St. Paul Reinsurance
Co. v. Comm. Financial Corp., 198 F.R.D. 508, 511, 512 (N.D. Iowa 2000). Further
emphasizing the fact Sidebar did nothing more than copy-and-paste a boilerplate objection
that was not specific to this matter, Plaintiffs actually do limit the time frame of their
requests to April 21, 2016 going forward, a time period that is quite reasonable given the
issues in this litigation. Sidebar fails to show the subpoena should be quashed as unduly
burdensome.
Sidebar next objects to the subpoena on the basis that the documents that Plaintiffs
seek are protected by the attorney-client and work-product privileges. But a person that
seeks to withhold information on this basis must expressly make the claim and “describe
the nature of the withheld documents, communications, or tangible things in a manner that,
without revealing information itself privileged or protected, will enable the parties to assess
the claim.” Fed. R. Civ. P. 45(e)(2). Merely objecting on the grounds of privilege is
insufficient.
Sidebar has not produced a privilege log and thus has not complied with Rule
45(e)(2). Some courts have found that failure to produce a privilege log results in a waiver
of the privilege. See Incompass IT, Inc. v. XO Communications Services, Inc., No. 10-cv-
3864, 2011 WL 13233488*4 (D. Minn. Nov. 14, 2011) (considering claim of waiver of attorney-client privilege). Typically, however, courts find such a waiver only when considering other factors, including the timeliness of the objection, magnitude of the document production, and any other relevant circumstances.Id.
In this case, the Court will
not conclude at this point that Sidebar’s failure to produce a privilege log has resulted in a
blanket waiver of privilege. The Court will therefore permit Sidebar to produce a privilege
log when it responds to Plaintiffs’ subpoena. The Court puts Sidebar on notice, however,
that it has previously concluded that the other Defendants waived privilege with regard to
certain topics in this matter and that any deficiencies in Sidebar’s privilege log could well
result in an outright waiver of the privilege.
Finally, Sidebar has raised a series of other objections, including the fact that the
subpoena did not provide it sufficient time to respond, imposed an undue burden on it,
failed to include a provision for compensating it for its reasonable costs, and called for the
production of inaccessible electronically stored information. Each of these objections could
have, and should have, been addressed in the meet-and-confer session that Plaintiffs
attempted to arrange, and in which Sidebar refused to participate. Furthermore, Sidebar did
not explain why the information imposed an undue burden, why the proposed timeframe
for responses was unreasonable, or what electronically stored information it was unable to
access and why. Again, Sidebar did nothing more than raise a series of boilerplate
objections, which are insufficient to justify its failure to respond. The Court therefore
orders Sidebar to respond to the subpoena in full.
In reaching this conclusion, the Court notes that nothing in Rule 45 requires that
Sidebar be compensated for its time in responding to the subpoena. The provision that
Sidebar relies on, Rule 45(d)(3)(A)(iv), permits courts to quash a subpoena only if it would
subject a person to “undue burden.” Rule 45 requires Courts to protect persons who are not
parties “from significant expense resulting from compliance.” Fed. R. Civ. P.
45(d)(2)(B)(ii). In certain cases, this may even require the Court to shift the person’s costs
of compliance, provided that those costs are significant. Cedar Rapids Lodge & Suites,
LLC v. Seibert, No. 14-cv-4839, 2018 WL 3019899*2 (D. Minn. June 18, 2018). Whether a subpoena imposes significant expense depends on the circumstances of each case.Id.
Typically, however, a person who receives a Rule 45 subpoena is required to absorb the costs of responding to that subpoena. Honda Lease Trust v. Middlesex Mut. Assur. Co., No. 3:05-cv-1426,2008 WL 349239
*5 (D. Conn. Feb. 6, 2008).
Courts consider three factors to determine who should bear the cost of a Rule 45
subpoena: (1) the recipient’s interest in the outcome of the case; (2) whether the recipient
can more readily bear the costs than the requesting party, and (3) whether the litigation is
of public importance. In re Honeywell Int’l, Inc. Sec. Lit., 230 F.R.D. 293, 303 (S.D.N.Y.
2003). Here, Sidebar has provided no information regarding the cost that it will incur in
responding to the subpoena, let alone any information showing that such costs would
constitute a significant expense. Sidebar also provided no information to show that it lacked
the financial ability to bear those costs. Furthermore, though Sidebar has defaulted, it still
is a named Defendant in this matter and thus undoubtedly still has an interest in the outcome
of this litigation. As a result, it should be required to bear the cost of production, as it would
normally under Rule 34. Under the circumstances, the Court will not require Plaintiffs to
compensate Sidebar for its time responding to the subpoena.
Plaintiffs also ask the Court use its inherent authority to sanction Sidebar for its
conduct in responding to the subpoena. The Court has the inherent authority to order
sanctions that are necessary to “achieve the orderly and expeditious resolution of cases.”
Vallejo v. Amgen, Inc., 903 F.3d 733, 749(8th Cir. 2018). This includes the authority to “fashion an appropriate sanction for conduct which abuses the judicial process.” Goodyear Tire & Rubber Co. v. Haeger,137 S. Ct. 1178, 1186
(2017). The inherent authority to sanction extends to a full range of litigation abuses and is not displaced by the Federal Rules or any other statute. Chambers v. NASCO, Inc.,501 U.S. 32, 46
(1991). It includes the authority to sanction a party for acting “in bad faith, vexatiously, wantonly, or for oppressive reasons.”Id. at 45-46
.
Sidebar has not conducted itself in the manner that the Court expects of its litigants.
It refused to participate in this litigation in any meaningful capacity. It refused to meet-
and-confer with Plaintiffs’ counsel regarding their subpoena. It refused to respond to this
motion. It failed to keep an updated address where it can be served, then claimed that
Plaintiffs did not serve it properly. It did nothing more than serve a series of boilerplate
objections in response to the subpoena. Sanctions are typically appropriate for such
conduct.
The Court will, however, provide one more opportunity for Sidebar to respond fully
to Plaintiffs’ subpoena. Sidebar must do so within 45 days of the date of this Order. If
Sidebar does not do so, the Court will issue an order to show cause as to why Sidebar
should not be held in civil contempt of court. The Court will also consider the imposition
of significant monetary sanctions, as well as the possibility of referring its agent, Wilson,
to California state bar authorities for possibly disciplinary proceedings. The Court will not
entertain any more delay or excuse from Sidebar in this proceeding. Sidebar must comply
with its obligations under the Federal Rules of Civil Procedure.
III. CONCLUSION
Therefore, based upon the record, memoranda, and proceedings herein, IT IS
HEREBY ORDERED as follows:
1. Plaintiffs’ Motion to Compel Discovery from Sidebar Legal, PC (ECF No. 417) is
GRANTED IN PART and DENIED IN PART as follows:
a. Within 10 days of the date of this Order, Plaintiffs shall serve a copy of
this Order and their subpoena on Sidebar by sending both documents via
registered mail to the home address of Matthew Wilson, registered agent
of Sidebar Legal, PC.
b. Within 10 days of the date of this Order, Plaintiffs shall also serve a copy
of this Order and their subpoena on the California Secretary of State for
Service on Sidebar Legal, PC, pursuant to California Corporations Code
§ 1702.
c. Sidebar Legal, PC shall provide complete responses to Plaintiffs’
subpoena within 45 days of the date of this Order. For any responsive
document withheld pursuant to an assertion of privilege or other similar
bases, said document must be identified on a proper privilege log that is
in compliance with all applicable rules and produced within 45 days.
d. Plaintiffs’ motion for sanctions is denied without prejudice.
2. All prior consistent orders remain in full force and effect.
3. Failure to comply with any provision of this Order or any other prior consistent
order shall subject the non-complying party, non-complying counsel and/or the party such
counsel represents to any and all appropriate remedies, sanctions and the like, including
without limitation: assessment of costs, fines and attorneys’ fees and disbursements; waiver
of rights to object; exclusion or limitation of witnesses, testimony, exhibits, and other
evidence; striking of pleadings; complete or partial dismissal with prejudice; entry of whole
or partial default judgment; and/or any other relief that this Court may from time to time
deem appropriate.
[signature on next page]
Date: March 4, 2019 s/ Tony N. Leung
Tony N. Leung
United States Magistrate Judge
District of Minnesota
Paisley Park Enterprises, Inc., et al. v.
Boxill, et al.
Case No. 17-cv-1212 (WMW/TNL) Trial Court Opinion
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
Paisley Park Enterprises, Inc. and Comerica
Bank & Trust, N.A. as Personal
Representative for the Estate of Prince
Rogers Nelson,
Plaintiffs,
Case No. 17-cv-1212 (WMW/TNL)
v.
George Ian Boxill, Rogue Music Alliance,
LLC, Deliverance, LLC, David Staley,
Gabriel Solomon Wilson, Brown & Rosen, ORDER
LLC and Sidebar Legal, PC,
Defendants,
Lora Mitchell Friedemann and Anne R. Rondoni Tavernier, Fredrikson & Byron, PA,
200 South Sixth Street, Suite 4000, Minneapolis, MN 55402 (for Plaintiffs);
Paul Allen Godfread, Godfread Law Firm, 6043 Hudson Road, Suite 305, Woodbury,
MN 55125 (for Defendants George Ian Boxill, Rogue Music Alliance, LLC, Deliverance,
LLC, David Staley, and Gabriel Solomon Wilson);
M. Gregory Simpson, Meagher & Geer, PLLP, 33 South Sixth Street, Suite 4400,
Minneapolis, MN 55402 (for Defendant Brown and Rosen LLC); and
No appearance by or on behalf of Sidebar Legal PC.
This matter is before the Court on Plaintiffs’ Motion to Compel Discovery from
Sidebar Legal, PC (ECF No. 417). For the reasons set forth below, the Court will grant in
part and deny in part the motion.
I. BACKGROUND
Plaintiff Comerica Bank & Trust, N.A. is the personal representative for the estate
of the late internationally known musician Prince Rogers Nelson (“Prince” and “Prince
Estate”). Third Amend. Compl. ¶ 2 (ECF No. 262). The Prince Estate owns Plaintiff Paisley
Park Enterprises, Inc. Id. The Prince Estate has an interest in various songs created by
Prince, including those not released to the public. Id. at ¶ 3.
On April 14, 2017, Plaintiffs filed suit in state court against Defendant George Ian
Boxill, a sound engineer who worked with Prince previously, alleging that Boxill took
tracks of certain songs that he worked on with Prince and that Boxill edited, and released
those songs without the Prince Estate’s permission. (ECF No. 2, p. 3-5). Boxill removed
the lawsuit to federal court on April 18, 2017. (ECF No. 1). Plaintiffs later filed an amended
complaint in which they named Sidebar Legal, PC (“Sidebar”) as a defendant. Third
Amend. Compl. ¶ 18 (ECF No. 262). Plaintiffs allege that Sidebar induced, encouraged,
contributed to, and materially participated in the infringement of the Prince Estate’s
intellectual property and tortuously interfered with a confidentiality agreement between
Prince and Boxill. Id. at ¶ 25. Sidebar’s CEO, sole corporate officer, and its registered agent
for service of process is Matthew Wilson. (ECF No. 421-4, p. 60).
Plaintiffs attempted to serve the complaint and a document subpoena on Sidebar at
its registered business address of 890 Cypress Avenue, Redding, California 96001. (ECF
No. 421-4, pp. 60, 92). Sidebar also lists this address as its business address on its website.
(ECF No. 421-4, p. 57). Plaintiffs discovered, however, that Sidebar no longer operates at
this address. (ECF No. 421-4, p. 92).
Plaintiffs then contacted Wilson by e-mail and asked that he provide an updated
address for Sidebar. (ECF No. 421-4, p. 92). Wilson did not respond to the e-mail. (ECF
No. 421, p. 4). Plaintiffs then located Wilson’s home address and served the complaint on
him there. (ECF No. 326). Sidebar did not answer the complaint and was found to be in
default. (ECF No. 341).
Following entry of default, Plaintiffs issued a revised subpoena for the production
of documents to Sidebar, asking it to produce those documents at a law firm in Redding.
(ECF No. 421-1, pp. 1-9). Because Sidebar still had not updated its registered address,
Plaintiffs again served the subpoena on Wilson at his home address. (ECF No. 421-4, p.
94). Approximately two weeks later, Sidebar responded to the subpoena, with a cover letter
listing the Cypress Avenue location as its business address. (ECF No. 421-4, p. 96). Sidebar
objected to the subpoena for multiple reasons, including improper service, failure to
provide witness fees and mileage, that the document requests were overly broad and
irrelevant, that the subpoena sought documents protected by the attorney-client and work
product privilege, and that the subpoena failed to allow a reasonable amount of time for its
response. (ECF No. 421-4, pp. 97-99). Sidebar produced no documents and did not respond
to Plaintiffs’ request for a meet and confer regarding its objections. (ECF Nos 421, p. 5,
421-4, p. 101).
Plaintiffs then filed a motion to compel compliance with the subpoena in the Eastern
District of California. See Order, Paisley Park Enterprises, Inc. v. Boxill, 19-mc-006, ECF
No. 9. That court transferred the motion to the District of Minnesota for consideration. Id.
The Court heard argument on this matter on February 5, 2019. Sidebar did not file a
responsive memorandum or otherwise appear at the hearing. Following argument from the
other parties, the Court took this matter under advisement.
II. ANALYSIS
Plaintiffs move to compel discovery from Sidebar. Rule 26 permits parties to
“obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim
or defense and proportional to the needs of the case[.]” Fed. R. Civ. P. 26(b)(1). Relevance
is “construed broadly to encompass any matter that bears on, or that reasonably could lead
to other matter that could bear on, any issue that is or may be in the case.” Oppenheimer
Fund, Inc. v. Sanders, 437 U.S. 340, 351(1978). To determine whether the discovery requested is proportional to the needs of the case, courts consider “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). This Court “has considerable discretion in granting or denying discovery requests[.]” Bredemus v. Int’l Paper Co.,252 F.R.D. 529, 534
(D.
Minn. 2008).
At the outset, the Court must consider whether it was appropriate for Plaintiffs to
obtain discovery from Sidebar by way of a Rule 45 subpoena. Typically, Rule 45
subpoenas are used to obtain documents or testimony from non-parties. First City, Texas-
Houston, N.A. v. Rafidain Bank, 197 F.R.D. 250, 255 n. 5 (S.D.N.Y. 2000), aff’d,281 F.3d 48
(2d Cir. 2002). Courts are split as to whether it is proper for a Rule 45 subpoena to be served on a party. Compare Hasbro, Inc. v. Serafino,168 F.R.D. 99, 100
(D. Mass. 1996) (holding documents sought from parties must be requested through Rule 34) with Badman v. Stark,139 F.R.D. 601
(M.D. Pa. 1991) (permitting service of Rule 45 subpoena on
party). The Court has not located a case in this district that addresses this issue directly.
The Court need not resolve this issue, however, because Sidebar is in default.
“Federal courts have consistently held that a defaulting defendant should be treated as a
non-party with respect to any discovery sought.” La Barbera v. Pass 1234 Trucking, Inc.,
No. 2004-cv-1364, 2008 WL 2564153*1 (E.D.N.Y. June 25, 2008). This is because defaulting parties “lose[] many of the rights of a party,” including the right to contest the factual allegations of the complaint. Jules Jordan Video, Inc. v. 144942 Canada, Inc.,617 F.3d 1146, 1159
(9th Cir. 2010). As a result, a party can obtain discovery from a defaulting party by way of a Rule 45 subpoena. Blazek v. Capital Recovery Assoc., Inc.,222 F.R.D. 360, 361-62
(E.D. Wisc. 2004).
The Court therefore turns to the merits of Plaintiffs’ motion. Plaintiffs seek
documents related to the release of the Prince music at issue in this lawsuit, work that
Sidebar performed for the other Defendants in this matter, and documents related to
Deliverance LLC, an entity that was created for the release of the Prince music. (ECF No.
421-1, pp. 6-9). There is no doubt that Plaintiffs’ requests are relevant to the issues
presented by this litigation. Sidebar was one of the primary entities responsible for the
release of the Prince EP and provided legal opinions to the other Defendants regarding the
release of the music. It was also a part owner of Deliverance LLC. Plaintiffs’ requests more
than satisfy the relevancy standard of Rule 26.
Furthermore, Sidebar has filed no response to Plaintiffs’ motion. On that basis alone,
it would be appropriate to order Sidebar to comply with the subpoena. Cf. Christensen v.
PennyMac Loan Services, LLC, 988 F. Supp. 2d 1036, 1042 (D. Minn. 2013) (collecting
cases where court concluded failure to respond to motion to dismiss warranted dismissal).
The Court will, however, consider the objections that Sidebar raised with Plaintiffs
regarding the subpoena.
Sidebar first contends that Plaintiffs did not it serve the subpoena properly. In
particular, it notes that the subpoena was “informally delivered to the residence of Matthew
Wilson.” (ECF No. 421-4, p. 97). Presumably, Sidebar is challenging the fact that the
subpoena was not delivered to its registered address, despite the fact it no longer appears
to operate from that address.
Federal Rule of Civil Procedure 45(b) allows service at any place in the United
States by any person not a party to the lawsuit who is over the age of 18. Courts previously
interpreted Rule 45(b) as requiring personal service. Western Resources, Inc. v. Union
Pacific R. Co., No. 00-2043, 2002 WL 1822432*2 (D. Kan. July 23, 2002). In recent years, however, courts “have departed from that view” and permitted alternative means of service. Boaz v. Federal Express Corp., 09-cv-2232,2010 WL 11601290
*2 (W.D. Tenn. June 21, 2010). Whether Rule 45 requires personal service turns primarily on the deciding court’s interpretation of “delivery” under Rule 45. The growing trend is for courts to permit “substitute service” of a Rule 45 subpoena, “so long as the method of service is reasonably calculated to provide timely, fair notice and an opportunity to object or file a motion to quash.” Fujikara Ltd. v. Finisar Corp., 15-mc-80110,2015 WL 5782351
*5 (N.D. Cal.
Oct. 5, 2015).
Rule 45 also “does not specify what constitutes personal service on a corporation in
the United States[.]” Sanchez Y Martin, SA de CV v. Dos Amigos, Inc., 17-cv-1943, 2018
WL 2387580*3 (S.D. Cal. May 24, 2018). Courts often rely on the service requirements of Federal Rule of Civil Procedure 4 to fill this gap. In re Grand Jury Subpoenas Issued to Thirteen Corps.,775 F.2d 43, 46
(2d Cir. 1985). Under Rule 4, a subpoena is properly served if delivered to “to an officer . . . authorized by appointment or by law to receive service of process and—if the agent is one authorized by statute and the statute so requires—by also mailing a copy [] to the [person to whom the subpoena is directed].” Fed. R. Civ. P. 4(h)(1)(B). Service may also be performed in any manner authorized under state law. Id. at 4(h)(1)(A). Consistent with Rule 4 relevant here, California law authorizes a party to serve a subpoena on a corporation by delivering to a designated agent or officer of the corporation. Cal. Code of Civ. Proc. § 416.10(a). California law also allows for alternative service when a designated agent cannot be found at the address designated for personal service of process. In such cases, the Court may order that the party effect service by delivering “one copy of the process for each defendant to be served, together with a copy of the order authorizing such service” to the California Secretary of State.Cal. Corp. Code § 1702
(a). The Secretary of State must then forward the service of process to the corporation’s principal executive office or the last designated agent for service of process.Id.
§ 1702(b). If no agent or address can be identified, then no additional action need be
taken by the Secretary of State. Id. Service is deemed complete on the 10th day after
delivery of the process to the Secretary of State. Id. § 1702(a).
In this case, Plaintiffs served the subpoena personally on Wilson, Sidebar’s only
corporate officer and registered agent, at the home address for Wilson. Though Plaintiffs
did not serve the subpoena at Sidebar’s registered address with the California Secretary of
State, that is only because Sidebar has not kept current its registered address, nor identified
any other address by which it could be served. As a result, if Plaintiffs could not serve
Sidebar at Wilson’s home address, then it likely would be impossible for them to ever serve
Sidebar. Moreover, as evidenced by Wilson’s response to the subpoena, it is apparent that
Plaintiffs effected service in a manner that allowed Sidebar fair notice and the “opportunity
to object or file a motion to quash.” Fujikara, 2015 WL 5782351 at *5. Essentially,
Plaintiffs did the all they could to ensure the subpoena was delivered personally to
Sidebar’s registered agent. The Court therefore concludes that Plaintiffs properly served
the subpoena on Sidebar.
Out of an abundance of caution, however, and to ensure there can be no further
argument regarding the adequacy of service, the Court will order Plaintiffs to re-serve
Sidebar in two different ways. First, the Court will order Plaintiffs to mail a copy of this
order, along with their subpoena, to Wilson’s home address. Second, the Court will order
Plaintiffs to serve a copy of this order and their subpoena through the California Secretary
of State, as provided by section 1702 of the California Corporations Code. Service through
each of these means will ensure that Sidebar cannot question in good faith the validity of
the process that Plaintiffs use in this matter, nor attempt to claim in good faith that it was
unaware of the Court’s order here.
Sidebar next objects to the subpoena on the ground that it “was not accompanied by
the required witness fee and mileage allowed by law.” (ECF No. 421-4, p. 97). This
argument is completely without merit. Though the Federal Rules of Civil Procedure require
the tendering of fees and mileage when a “subpoena requires that person’s attendance,” it
is well established that a subpoena compelling only the production of documents need not
be accompanied by such a tender because it does not require the appearance of the
subpoenaed person. Fed. R. Civ. 45(b)(1); Jackson v. Brinker, 91-471-C, 1992 WL 404537
*2 (S.D. Ind. Dec. 21, 1992). In addition, were this Sidebar’s primary reason for non-
compliance with the subpoena, it should have, at a minimum, sought relief from the Court
or raised this issue with Plaintiffs in the meet-and-confer session that they requested. The
Court will not excuse Sidebar from complying with the subpoena on this basis.
Sidebar also contends that Plaintiffs’ requests “are not reasonably related to any of
the claims or defenses asserted in the above-captioned lawsuit and are otherwise beyond
the scope of discovery as provided in Fed. R. Civ. P. 26(b).” (ECF No. 421-4, p. 97-98).
In particular, Sidebar argues that the requests are overly broad, do not relate to facts or
claims in the current pleadings, and not limited as to time frame. Sidebar fails, however, to
identify how each specific request is deficient or how Sidebar would be harmed if it were
required to respond. Mere statements like these constitute nothing more than boilerplate
objections that are insufficient to preserve the objecting party’s rights. St. Paul Reinsurance
Co. v. Comm. Financial Corp., 198 F.R.D. 508, 511, 512 (N.D. Iowa 2000). Further
emphasizing the fact Sidebar did nothing more than copy-and-paste a boilerplate objection
that was not specific to this matter, Plaintiffs actually do limit the time frame of their
requests to April 21, 2016 going forward, a time period that is quite reasonable given the
issues in this litigation. Sidebar fails to show the subpoena should be quashed as unduly
burdensome.
Sidebar next objects to the subpoena on the basis that the documents that Plaintiffs
seek are protected by the attorney-client and work-product privileges. But a person that
seeks to withhold information on this basis must expressly make the claim and “describe
the nature of the withheld documents, communications, or tangible things in a manner that,
without revealing information itself privileged or protected, will enable the parties to assess
the claim.” Fed. R. Civ. P. 45(e)(2). Merely objecting on the grounds of privilege is
insufficient.
Sidebar has not produced a privilege log and thus has not complied with Rule
45(e)(2). Some courts have found that failure to produce a privilege log results in a waiver
of the privilege. See Incompass IT, Inc. v. XO Communications Services, Inc., No. 10-cv-
3864, 2011 WL 13233488*4 (D. Minn. Nov. 14, 2011) (considering claim of waiver of attorney-client privilege). Typically, however, courts find such a waiver only when considering other factors, including the timeliness of the objection, magnitude of the document production, and any other relevant circumstances.Id.
In this case, the Court will
not conclude at this point that Sidebar’s failure to produce a privilege log has resulted in a
blanket waiver of privilege. The Court will therefore permit Sidebar to produce a privilege
log when it responds to Plaintiffs’ subpoena. The Court puts Sidebar on notice, however,
that it has previously concluded that the other Defendants waived privilege with regard to
certain topics in this matter and that any deficiencies in Sidebar’s privilege log could well
result in an outright waiver of the privilege.
Finally, Sidebar has raised a series of other objections, including the fact that the
subpoena did not provide it sufficient time to respond, imposed an undue burden on it,
failed to include a provision for compensating it for its reasonable costs, and called for the
production of inaccessible electronically stored information. Each of these objections could
have, and should have, been addressed in the meet-and-confer session that Plaintiffs
attempted to arrange, and in which Sidebar refused to participate. Furthermore, Sidebar did
not explain why the information imposed an undue burden, why the proposed timeframe
for responses was unreasonable, or what electronically stored information it was unable to
access and why. Again, Sidebar did nothing more than raise a series of boilerplate
objections, which are insufficient to justify its failure to respond. The Court therefore
orders Sidebar to respond to the subpoena in full.
In reaching this conclusion, the Court notes that nothing in Rule 45 requires that
Sidebar be compensated for its time in responding to the subpoena. The provision that
Sidebar relies on, Rule 45(d)(3)(A)(iv), permits courts to quash a subpoena only if it would
subject a person to “undue burden.” Rule 45 requires Courts to protect persons who are not
parties “from significant expense resulting from compliance.” Fed. R. Civ. P.
45(d)(2)(B)(ii). In certain cases, this may even require the Court to shift the person’s costs
of compliance, provided that those costs are significant. Cedar Rapids Lodge & Suites,
LLC v. Seibert, No. 14-cv-4839, 2018 WL 3019899*2 (D. Minn. June 18, 2018). Whether a subpoena imposes significant expense depends on the circumstances of each case.Id.
Typically, however, a person who receives a Rule 45 subpoena is required to absorb the costs of responding to that subpoena. Honda Lease Trust v. Middlesex Mut. Assur. Co., No. 3:05-cv-1426,2008 WL 349239
*5 (D. Conn. Feb. 6, 2008).
Courts consider three factors to determine who should bear the cost of a Rule 45
subpoena: (1) the recipient’s interest in the outcome of the case; (2) whether the recipient
can more readily bear the costs than the requesting party, and (3) whether the litigation is
of public importance. In re Honeywell Int’l, Inc. Sec. Lit., 230 F.R.D. 293, 303 (S.D.N.Y.
2003). Here, Sidebar has provided no information regarding the cost that it will incur in
responding to the subpoena, let alone any information showing that such costs would
constitute a significant expense. Sidebar also provided no information to show that it lacked
the financial ability to bear those costs. Furthermore, though Sidebar has defaulted, it still
is a named Defendant in this matter and thus undoubtedly still has an interest in the outcome
of this litigation. As a result, it should be required to bear the cost of production, as it would
normally under Rule 34. Under the circumstances, the Court will not require Plaintiffs to
compensate Sidebar for its time responding to the subpoena.
Plaintiffs also ask the Court use its inherent authority to sanction Sidebar for its
conduct in responding to the subpoena. The Court has the inherent authority to order
sanctions that are necessary to “achieve the orderly and expeditious resolution of cases.”
Vallejo v. Amgen, Inc., 903 F.3d 733, 749(8th Cir. 2018). This includes the authority to “fashion an appropriate sanction for conduct which abuses the judicial process.” Goodyear Tire & Rubber Co. v. Haeger,137 S. Ct. 1178, 1186
(2017). The inherent authority to sanction extends to a full range of litigation abuses and is not displaced by the Federal Rules or any other statute. Chambers v. NASCO, Inc.,501 U.S. 32, 46
(1991). It includes the authority to sanction a party for acting “in bad faith, vexatiously, wantonly, or for oppressive reasons.”Id. at 45-46
.
Sidebar has not conducted itself in the manner that the Court expects of its litigants.
It refused to participate in this litigation in any meaningful capacity. It refused to meet-
and-confer with Plaintiffs’ counsel regarding their subpoena. It refused to respond to this
motion. It failed to keep an updated address where it can be served, then claimed that
Plaintiffs did not serve it properly. It did nothing more than serve a series of boilerplate
objections in response to the subpoena. Sanctions are typically appropriate for such
conduct.
The Court will, however, provide one more opportunity for Sidebar to respond fully
to Plaintiffs’ subpoena. Sidebar must do so within 45 days of the date of this Order. If
Sidebar does not do so, the Court will issue an order to show cause as to why Sidebar
should not be held in civil contempt of court. The Court will also consider the imposition
of significant monetary sanctions, as well as the possibility of referring its agent, Wilson,
to California state bar authorities for possibly disciplinary proceedings. The Court will not
entertain any more delay or excuse from Sidebar in this proceeding. Sidebar must comply
with its obligations under the Federal Rules of Civil Procedure.
III. CONCLUSION
Therefore, based upon the record, memoranda, and proceedings herein, IT IS
HEREBY ORDERED as follows:
1. Plaintiffs’ Motion to Compel Discovery from Sidebar Legal, PC (ECF No. 417) is
GRANTED IN PART and DENIED IN PART as follows:
a. Within 10 days of the date of this Order, Plaintiffs shall serve a copy of
this Order and their subpoena on Sidebar by sending both documents via
registered mail to the home address of Matthew Wilson, registered agent
of Sidebar Legal, PC.
b. Within 10 days of the date of this Order, Plaintiffs shall also serve a copy
of this Order and their subpoena on the California Secretary of State for
Service on Sidebar Legal, PC, pursuant to California Corporations Code
§ 1702.
c. Sidebar Legal, PC shall provide complete responses to Plaintiffs’
subpoena within 45 days of the date of this Order. For any responsive
document withheld pursuant to an assertion of privilege or other similar
bases, said document must be identified on a proper privilege log that is
in compliance with all applicable rules and produced within 45 days.
d. Plaintiffs’ motion for sanctions is denied without prejudice.
2. All prior consistent orders remain in full force and effect.
3. Failure to comply with any provision of this Order or any other prior consistent
order shall subject the non-complying party, non-complying counsel and/or the party such
counsel represents to any and all appropriate remedies, sanctions and the like, including
without limitation: assessment of costs, fines and attorneys’ fees and disbursements; waiver
of rights to object; exclusion or limitation of witnesses, testimony, exhibits, and other
evidence; striking of pleadings; complete or partial dismissal with prejudice; entry of whole
or partial default judgment; and/or any other relief that this Court may from time to time
deem appropriate.
[signature on next page]
Date: March 4, 2019 s/ Tony N. Leung
Tony N. Leung
United States Magistrate Judge
District of Minnesota
Paisley Park Enterprises, Inc., et al. v.
Boxill, et al.
Case No. 17-cv-1212 (WMW/TNL) Reference
- Status
- Unknown