In re Elvis Presley Enters. LLC, No. 1:15-mc-00386 (S.D.N.Y. Mar. 1, 2016)

Plaintiff Elvis Presley Enterprises LLC filed suit in Germany against Defendant Arista Music (“Arista”), the legal successor to RCA Records, which has sold Elvis Presley’s recordings for over sixty years. 

In the lawsuit, Plaintiff argued that Arista paid “grossly disproportionate” fees to Plaintiff from Arista’s German sales of Presley’s recordings.  Plaintiff consequently sought information along with equitable remuneration from Arista.  After the Regional Court of Munich dismissed the suit, Plaintiff appealed to the Higher Regional Court of Munich.  The Higher Regional Court ordered Arista to disclose information—including profits earned, royalties received, and names and addresses of third party licensees—to be used in calculating Plaintiff’s equitable remuneration claim.

Arista produced the responsive documents, but Plaintiff argued that Arista failed to include certain documents and that the information was inaccurate.  Plaintiff renewed its request for documents, and Arista declined to produce more information.  Rather than seeking relief in the Higher Regional Court, Plaintiff filed an application pursuant to 28 U.S.C. § 1782 (the “§ 1782 Application”) in the U.S. District Court for the Southern District of New York.  Before the district court ruled on Plaintiff’s § 1782 Application, the Higher Regional Court dismissed Plaintiff’s claims—which Plaintiff later appealed.

The district court ultimately denied Plaintiff’s § 1782 Application.  The § 1782 Application requested access to many categories of information from Sony Music Entertainment (“Sony”), Arista’s corporate parent.  Both parties agreed that the statutory requirements to § 1782 were met, as Sony is located in the Southern District of New York, the sought information was for use before a foreign tribunal, and Plaintiff, a party to the German proceeding, had an interest in its outcome.  Thus, the analysis focused on whether discretionary factors (the “Intel Factors”) would favor the granting or denial of the § 1782 Application.

The first Intel Factor considers whether the sought information was within the Higher Regional Court’s jurisdiction.  This factor favored Sony: not only did Sony provide information to Arista so it could comply with the Higher Regional Court’s order, but Plaintiff declined to seek a remedy in the German courts.  The court dismissed Plaintiff’s argument that the right to information in the German court is narrower than U.S. discovery, and disregarded Plaintiff’s claim that it needed further information to prove that Arista’s production was inaccurate or incomplete.

The second Intel Factor considers the nature of the German litigation and the Higher Regional Court’s openness to receiving assistance from U.S. courts.  While it was unclear if evidence produced under the § 1782 Application would be admissible in Germany, the court found this irrelevant, holding that the procedural posture of the German proceedings and the delayed § 1782 Application weighed against Plaintiff.  The court noted that the German judgment granting Plaintiff the ability to obtain information from Arista was issued in July 2013, yet Plaintiff waited until December 2015 to file its § 1782 Application.  Moreover, when its action for equitable remuneration was dismissed by the German court in December 2015, Plaintiff did not then argue that Arista’s production was deficient, and did not seek redress from the German courts for Arista’s purported failure to comply with the July 2013 judgment. 

The next Intel Factor considers whether Plaintiff’s request was an effort to circumvent German law.  While there are no general provisions in Germany that require document production in litigation, the court considered this factor to be neutral since § 1782 does not require Plaintiff to exhaust its remedies in Germany or prove that the information would be admissible or discoverable there.

Finally, the court held that compliance with the § 1782 Application would be unduly burdensome or intrusive, as it would impose a heavy burden.  Plaintiff’s request was either minimally relevant to the German proceeding or was solely for the purpose of verifying the disclosed information.  Plaintiff did not identify any specific missing or cryptic sections in Arista’s German production, and Plaintiff did not connect the alleged deficiencies of that production with the requests it made under § 1782.

The court explained that it would have preferred to issue a narrowly-tailored discovery order rather than entirely reject the § 1782 Application.  The parties, however, could not agree on a narrower set of document requests, and asked the court to rule on the merits of the § 1782 Application.  Thus, given the posture of the German proceedings, the timing of the § 1782 Application, the breadth of Plaintiff’s requests, and Plaintiff’s limited efforts to narrow its requests, the court declined to conduct an independent review of the document requests and denied the § 1782 Application.