Case 1:21-cv-01340-CMH-JFA Document 64 Filed 04/22/22 Page 1 of 28 PageID# 1198
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` UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`Case No. 1:21-cv-01340
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`BEDFORD, FREEMAN & WORTH
`PUBLISHING GROUP, LLC d/b/a
`MACMILLAN LEARNING; MACMILLAN
`HOLDINGS, LLC; CENGAGE LEARNING,
`INC.; ELSEVIER INC.; ELSEVIER B.V.;
`MCGRAW HILL LLC; and PEARSON
`EDUCATION, INC.,
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`v.
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`SHOPIFY INC.,
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`Plaintiffs,
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`Defendant.
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`DEFENDANT SHOPIFY INC.’S MEMORANDUM IN OPPOSITION
`TO PLAINTIFFS’ MOTION TO COMPEL
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`TABLE OF CONTENTS
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`I.
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`II.
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`Introduction ........................................................................................................................1
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`Factual Background...........................................................................................................1
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`III.
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`Argument ............................................................................................................................5
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`A.
`B.
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`C.
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`Relevant Legal Standard For the Parties’ Claims and Defenses ..............................6
`Plaintiffs’ Requests For Information Regarding Non-Alleged Merchants
`Should Be Denied As Unnecessary .........................................................................8
`1.
`Shopify Has Already Agreed to Produce Relevant and
`Proportionate Information Concerning Non-Alleged Merchants ................8
`a.
`Plaintiffs Misread Shopify’s Response to RFP No. 17, and
`Then Needlessly Moved To Compel Without Conferring ...............9
`Shopify Has Proposed A Reasonably Tailored Solution to
`Address RFPs Nos. 20-21 and Rogs. Nos. 9-10. ...........................10
`Plaintiffs’ Requests For Discovery Outside The Limitations Period Are
`Irrelevant And Disproportionate ............................................................................14
`1.
`Documents Years Outside the Limitations Period Are Not Relevant ........14
`a.
`Alleged Pre-Limitations Infringement by Shopify
`Merchants “Writ Large” Does Not Demonstrate
`“Knowledge.”.................................................................................14
`The Specific Discovery Sought By Plaintiffs Is Not
`Relevant To Knowledge ................................................................16
`Shopify’s Policies Prior To The Limitations Period Are Not
`Relevant To Its DMCA Safe Harbor Defense ...............................17
`Pre-Limitations Discovery Is Not Relevant To Statutory
`Damages .........................................................................................20
`The Requested Pre-Limitations Production Would Be Unduly
`Burdensome and Disproportionate ............................................................22
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`b.
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`b.
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`c.
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`d.
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`2.
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`IV.
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`Conclusion ........................................................................................................................24
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`I
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`I.
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`INTRODUCTION
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`Shopify has agreed to produce—and has already begun producing—extensive, costly,
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`time-intensive, and voluminous material relevant to the claims Plaintiffs actually pled (i.e.,
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`infringement of Plaintiffs’ specific copyrighted works by the Alleged Merchants1) and Shopify’s
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`defenses in this case. In an effort to needlessly harass and significantly increase the burden on
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`Shopify, Plaintiffs have moved to compel two additional sets of data: (1) information related to
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`Shopify’s records with respect to responding to notices of infringement and enforcing its repeat
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`infringer policy; and (2) information on a wide swath of discovery requests where Shopify agreed
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`to respond, but limited its response to the past three-and-a-half years, rather than the five-and-a-
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`half years demanded by Plaintiffs. Both requests should be denied, but for different reasons.
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`With respect to the first set of data, regarding responding to notices of infringement and
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`enforcing the repeat infringer policy, Plaintiffs’ motion is moot. Shopify agrees that during the
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`relevant limitations period, Plaintiffs should receive relevant, proportionate information on
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`Shopify’s infringement policies, procedures, and practices, beyond the Alleged Merchants. The
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`parties were deep in conferral on how to accomplish this, when Plaintiffs jumped the gun, filing
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`their motion despite Shopify’s good-faith efforts to produce essentially everything Plaintiffs have
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`asked for within the limitations period. Shopify continues, in good faith, to identify and produce
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`this information. To the extent any live dispute remains, the Court should hold that Shopify’s
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`planned production of responsive information is adequate.
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`With respect to the second set of data—Plaintiffs’ proposal to require Shopify to search for
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`and produce an additional two years of records, including from a legacy infringement tracking
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`1 The “Alleged Merchants” refers to any Shopify Merchants that were identified in response to an
`Infringement Notice sent by or on behalf of Plaintiffs, regarding any of the Copyrighted Works or
`Trademarks upon which Plaintiffs bring suit (Exhibits A and B to the Complaint), within the
`limitations period, i.e., between December 1, 2018 and March 1, 2022.
`1
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`system that was not used at all during the limitations period—Plaintiffs’ motion should be denied
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`as exceeding the bounds of permissible discovery under the Federal Rules. The pre-limitations
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`information Plaintiffs seek (including records of merchants that are not accused of infringement in
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`this case) is neither relevant nor proportional to the needs of the case. Plaintiffs’ arguments to the
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`contrary are premised on fundamental misstatements of governing law, including the binding law
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`of the Fourth Circuit on Shopify’s relevant “knowledge.” Even if the documents sought by
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`Plaintiffs were of some attenuated relevance to this case, that marginal relevance is far outweighed
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`by the burden of reviewing an additional two years of materials, which would increase by
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`approximately 60 percent the temporal scope of Shopify’s (already robust) document review.
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`Shopify is committed to providing relevant and proportionate discovery, so that this case
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`may be expeditiously decided on its merits. It has agreed to produce information on all “tickets”
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`concerning the Alleged Merchants from Shopify’s ticketing system used for tracking notices of
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`infringement, communicating with Alleged Merchants, applying infringement “strikes,” and
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`terminating Merchants. It has agreed to produce all communications with the Alleged Merchants
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`themselves, including those relating to infringement tickets, strikes, notices, or IP infringement
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`generally, without time limitations. It has agreed to produce all communications, during the
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`limitations period, concerning alleged infringement by the Alleged Merchants. It has already
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`produced 13,000 pages of responsive documents, and is preparing to produce thousands more. But
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`Plaintiffs’ requests in their Motion for further and additional discovery stray far beyond the bounds
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`of relevant and proportionate discovery under the Federal Rules, and should be denied.
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`II.
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`FACTUAL BACKGROUND
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`Plaintiffs’ Motion challenges (i) Shopify’s limitation of its responses to seven Requests for
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`Production (RFPs 6, 11, 14, 20, 21, 25, and 30) and five Interrogatories (Rogs. 1-3, 9, and 10) to
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`the statute of limitations period, and (ii) Shopify’s ostensible limitation of three Requests for
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`Production (RFPs 17, 20 and 21) and two Interrogatories (Rogs. 9 and 10) to the 3,426 alleged
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`infringements and the approximately 1,800 alleged infringing merchants actually at issue in this
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`suit. Dkt. 56 at 6-7, 10-12; see also Dkt. 1 at Exs. A-B. Critically, for RFPs Nos. 6, 11, 14, 25,
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`and 30, and Rogs. Nos. 1-3, Plaintiffs challenge only the temporal scope of Shopify’s discovery
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`responses—Plaintiffs seek information going back to January 1, 2017, despite the limitations
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`period beginning nearly two years later—but Plaintiffs do not presently dispute the adequacy of
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`the categories of responsive information that Shopify has agreed to produce. For RFP 17, Plaintiffs
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`challenge the substantive limits of Shopify’s response, but not the limitation of its response to the
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`limitations period. For the remaining RFPs 20 and 21, and Rogs. 9 and 10, Plaintiffs dispute both
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`the substantive and temporal limits of Shopify’s response. However, as explained below, with
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`respect to the substantive dispute, Plaintiffs’ motion is premature and there is actually little or no
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`difference between the parties’ respective positions.
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`As detailed infra, Shopify believes that it has already agreed to produce all discovery to
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`which Plaintiffs are entitled under the standard articulated by Rule 26 of the Federal Rules of Civil
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`Procedure. But Plaintiff’s motion obscures, rather than illuminates, the voluminous discovery on
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`these topics that Shopify has already agreed to produce, and in many cases has already commenced
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`producing, namely the following:
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`• Alleged Merchant Information (RFPs Nos. 25, 30): Plaintiffs requested all documents
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`discussing any “Infringement Notice” from Plaintiffs to Shopify concerning Shopify
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`Merchants; and all documents concerning any “warnings, ratings, risk assessments, flags”
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`relating to risk for the foregoing Merchants. Dkt. 56-1 at 38, 45. In response, Shopify is
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`willing to produce (i) all communications with the Alleged Merchants in Shopify’s possession,
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`custody, or control (without time limitation); (ii) all “information from [Shopify’s]
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`[infringement notice] ticketing system for the tickets” associated with each Alleged Merchant
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`from December 1, 2018 to March 1, 2022 (the limitations period) (i.e., the main location of
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`documentation regarding Shopify’s process for and responses to infringement notices); (iii) all
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`communications concerning these Alleged Merchants insofar as they relate to infringement
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`(including notices, flags, warnings, and infringement risk assessments, to the extent they exist),
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`from December 1, 2018 to March 1, 2022 (the limitations period); and (iv) any infringement-
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`related flags or strikes on the Alleged Merchant accounts from January 1, 2017 onward. See
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`Dkt. 56-1 at 39, 46; Stebbins Bina Decl. ¶ 5.2
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`• Infringement Policies and Procedures: (RFP No. 6, Rog Nos. 1-2): Plaintiffs requested all
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`documents concerning Shopify’s “strategies, approaches, policies, or procedures” concerning
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`“infringement,” along with “all persons” with any responsibility for “designing, developing,
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`or implementing” such policies, procedures, or practices. Dkt. 56-1 at 14; Dkt. 56-2 at 6, 9.
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`Shopify has agreed to produce the discovery responsive to these requests during the limitations
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`period, from December 1, 2018 to March 1, 2022. See id.
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`• Shopify’s Infringement Tracking System (RFP No. 11, Rog. No. 3): Plaintiffs requested all
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`documents concerning “any system used for tracking Infringement Notices,” including its
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`“technical abilities,” along with “all persons” with any responsibility for “designing,
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`developing, or implementing” that system. Dkt. 56-1 at 20; Dkt. 56-2 at 11. Shopify agreed
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`to produce “documents sufficient to show the capabilities of Shopify’s system used for tracking
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`and processing Infringement Notices,” and “personnel . . . responsible for creating the system,”
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`2 In response to Plaintiffs’ concerns articulated through the meet-and-confer process, Shopify’s
`agreements to produce information, as reflected in this Motion, are more expansive than those
`articulated in Shopify’s initial discovery Responses served on March 31, 2022. Stebbins Bina
`Decl. ¶¶ 5-7.
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`but only for its current infringement system that Shopify first deployed in October 2018 (two
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`months prior to the limitations period), and not the legacy infringement system that was used
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`prior to October 2018. See Dkt. 56-1 at 21; Dkt. 56-2 at 12.
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`• Infringement Summaries, Reports, and Analyses (RFP No. 14): Plaintiffs requested all
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`“documents” “including summaries, reports, or analyses, concerning [Shopify’s] handling of
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`and response to Infringement Notices. . . .’” Dkt. 56-1 at 24. Shopify agreed to produce “non-
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`privileged summaries, including reports and analyses, concerning Shopify’s handling of, and
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`response to, Infringement Notices,” during the limitations period. Id. at 25.
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`• Reactivation of Terminated Merchants (RFP No. 17): Plaintiffs seek information regarding
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`any merchants Shopify terminated for infringement and reactivated, during the limitations
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`period. As explained below, Shopify agreed to produce this information in its initial responses;
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`it is unclear why Plaintiffs have moved on this RFP as there appears to be no dispute.
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`• Alleged Rejections of Infringement Notices via Email (RFPs Nos. 20-21, Rogs. Nos. 9-10):
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`Plaintiffs seek information about “Infringement Notices” Shopify “received via email” and did
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`not “process[,]” instead responding that the Notice was “not proper” because it was “submitted
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`via email” or “reported multiple infringements” or “multiple . . . Merchants.” Dkt. 56-1 at 31-
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`33; Dkt. 56-2 at 19-21. As detailed below in Section I, Shopify is willing to produce this
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`information during the limitations period, from December 1, 2018 to March 1, 2022.
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`III. ARGUMENT
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`“Parties may obtain discovery regarding any nonprivileged matter that is relevant to any
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`party’s claim or defense and proportional to the needs of the case . . . .” Fed. R. Civ. P. 26(b)(1).
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`Under this standard, “it is proper to deny discovery of matter that is relevant only to . . . events that
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`occurred before an applicable limitations period, unless the information sought is otherwise
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`relevant to issues in the case.” Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 352 (1978)
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`(emphasis added). That is, discovery prior to the limitations period is properly denied unless the
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`movant shows the requested discovery is nonetheless “relevant” to the claims or defenses. Id.
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`Additionally, all discovery must be proportional. Fed. R. Civ. P. 26(b)(1). Courts evaluate
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`proportionality by considering “the amount in controversy,” the “importance” of the material
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`sought, the parties’ “resources,” the parties’ “access” to materials, and “whether the burden or
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`expense of the proposed discovery outweighs its likely benefit.” Brink’s Co. v. Chubb Eur. Grp.
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`Ltd., No. 3:20-520, 2021 WL 5083335, at *4 (E.D. Va. Feb. 24, 2021), adopted, 2021 WL 5083332
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`(E.D. Va. Mar. 12, 2021).
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`Shopify has already agreed to provide Plaintiffs all of the information that is relevant and
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`proportional to this case. Their motion to compel further discovery should be denied.
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`A.
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`Relevant Legal Standard For the Parties’ Claims and Defenses
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`Under Rule 26, discovery must be “relevant to any party’s claim or defense.” Fed. Rule
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`Civ. Pro. 26(b)(1). Here, Plaintiffs bring claims for contributory copyright and trademark
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`infringement, and Shopify defends based on its own lack of involvement in the alleged
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`infringement by its users, and based on the statutory safe harbor under Section 512 of the Digital
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`Millennium Copyright Act (“DMCA”). See generally Answer, Dkt. 30.
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`The first, threshold element of a claim for a claim of contributory copyright infringement
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`is an act of direct copyright infringement, during the limitations period, by a third party. See, e.g.,
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`Bridgeport Music, Inc. v. Diamond Time, Ltd., 371 F.3d 883, 890 (6th Cir. 2004). Under the
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`Copyright Act, the statute of limitations is three years from the filing of this suit on December 1,
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`2021. Id.; 17 U.S.C. § 507(b); Compl., Dkt. 1. Accordingly, Plaintiffs can bring claims only as
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`to acts of direct infringement that took place during the limitations period, i.e., since December 1,
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`2018. Bridgeport Music, 371 F.3d at 890.3 If Plaintiffs prove such an act of infringement, they
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`must prove two more elements, within the limitations period: That Shopify, “[2] with knowledge
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`of the infringing activity, [3] induce[d], cause[d] or materially contribute[d] to the infringing
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`conduct.” CoStar Grp., Inc. v. LoopNet, Inc., 373 F.3d 544, 550 (4th Cir. 2004); see also
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`Bridgeport Music, 371 F.3d at 890 (“claims against a contributory infringer who commits no acts
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`within the limitations period are also time barred”).
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`The DMCA’s safe harbor, in turn, shields Shopify from liability for contributory copyright
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`infringement by its third-party customers, if during the limitations period, Shopify “has adopted
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`and reasonably implemented, and inform[ed] subscribers and account holders . . . of, a policy that
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`provides for the termination in appropriate circumstances of subscribers and account holders . . .
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`who are repeat infringers.” 17 U.S.C. § 512(i)(1)(A); see also Answer, Dkt. 30 at 37; cf. Rosen v.
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`eBay, Inc., No. 16-9183, 2018 WL 4808513, at *5 (C.D. Cal. Apr. 4, 2018) (explaining that DMCA
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`defense depends on the adequacy of defendant’s policies during time period subject to suit). This
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`policy must apply to all of Shopify’s merchants, not just those alleged to have infringed in this
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`specific case. See, e.g., Rosen, 2018 WL 4808513, at *5-6.
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`Finally, if liability is proven and Shopify’s defenses are overcome, a jury may consider a
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`number of factors in determining the amount, if any, of statutory damages, including: “(1) whether
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`the defendant was the original provider of the infringed content to its distribution network; (2)
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`3 Plaintiffs argue that it is possible that the statute of limitations might be tolled if they did not
`discover (and should not have discovered) a given infringement prior to the limitations period.
`Dkt 56 at 5 n.1; cf. Werner v. BN Media, LLC, 477 F. Supp. 3d 452, 455-56 (E.D.V.A. 2020)
`(explaining that claim accrues when “one has knowledge of a violation or is chargeable with such
`knowledge” but that damages are limited to the three years prior to filing suit regardless). But this
`is a red herring: Plaintiffs do not allege any recently “discovered” pre-December 1, 2018
`infringement; to the contrary, Plaintiffs maintain vigorous monitoring and rights enforcement
`practices. See, e.g., Dkt. 1, ¶ 6.
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`whether, and how much, the defendant profited or saved in connection with the infringement; (3)
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`the plaintiff’s actual losses; (4) [deterrence]; and (5) the defendant’s willfulness and intent in
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`infringing the plaintiff’s protected content.” ME2 Prods., Inc. v. Fox, No. 3:17-CV-00057, 2018
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`WL 1470251, at *2 (E.D. Va. Mar. 26, 2018).4
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`B.
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`Plaintiffs’ Requests For Information Regarding Non-Alleged Merchants
`Should Be Denied As Unnecessary
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`The bulk of Plaintiffs’ motion, and of this opposition, addresses Plaintiffs’ demand for
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`discovery for a full two years prior to the start of the limitations period in this case. Before delving
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`into this genuine dispute between the parties with respect to temporal limitations, however,
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`Shopify first addresses Plaintiffs’ demand for additional substantive material with respect to
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`Requests for Production 17, 20, and 21, and Interrogatories 9 and 10. Shopify addresses these
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`matters first because it does not believe there is any genuine dispute between the parties—a fact
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`that would have become apparent to Plaintiffs had they not rushed to file their motion in the midst
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`of the parties’ meet and confer efforts.
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`1.
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`Shopify Has Already Agreed to Produce Relevant and Proportionate
`Information Concerning Non-Alleged Merchants
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`With these five requests (RFPs 17, 20, and 21, and Rogs 9 and 10), Plaintiffs assert that
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`they are entitled to explore Shopify’s repeat infringer policy generally, and not just with respect to
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`the Alleged Merchants. See Dkt. 56 at 13-16. But this is not disputed: Shopify agrees to produce
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`reasonable, proportionate discovery on each of these requests. As to the first request (RFP No.
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`17), Shopify agreed in its initial responses to provide Plaintiffs the requested materials concerning
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`“reactivation” of Shopify Merchants. As to the other four requests, the parties were in the middle
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`4 Plaintiffs do not address the elements of trademark infringement or argue that there is any
`material difference that would impact the outcome of this motion. Shopify concurs: These
`elements closely parallel contributory copyright infringement. See, e.g., Passport Health, LLC v.
`Avance Health Sys., 823 F. App’x 141, 146 (4th Cir. 2020) (discussing “indirect infringers”).
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`of the meet-and-confer process on a tailored solution when Plaintiffs filed their motion, and
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`Shopify is in the middle of carrying out a reasonable protocol to provide Plaintiffs the requested
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`information, consistent with Plaintiffs’ requests.
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`a.
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`Plaintiffs Misread Shopify’s Response to RFP No. 17, and
`Then Needlessly Moved To Compel Without Conferring
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`For RFP No. 17, Plaintiffs requested all documents “concerning the reactivation of service
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`for any Shopify Merchant whose service You terminated for violation of any policy relating to
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`copyright or trademark infringement.” Dkt. 56-1 at 27. That is, Plaintiffs want to know about any
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`Merchant that was “terminated” due to infringement, and then “reactivated.” Id. Plaintiffs claim
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`that Shopify’s Response to RFP No. 17 is insufficient because Shopify “agreed to provide this
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`information for the merchants identified in this suit, but not for other merchants,” and “Shopify
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`should respond to this document request in full, without limiting its response to the infringing
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`merchants identified in Plaintiffs’ notices.” Dkt. 56 at 16 (emphasis added).
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`But this is not true. Even a cursory review of Shopify’s Response demonstrates that
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`Shopify agreed to produce the information Plaintiffs are moving to compel, i.e., documents
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`sufficient to show reactivation of any merchants terminated for infringement:
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`Shopify will produce relevant, non-privileged documents sufficient to show
`Shopify’s policies and processes for, and any actual reactivation of, Shopify
`Merchants whose service Shopify terminated for violation of any policy relating to
`copyright or trademark, for the period of December 1, 2018 through March 1, 2022.
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`Dkt. 56-1 at 28 (emphases added). There is no dispute here, as Plaintiffs would have known had
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`they conferred on this RFP before filing their motion. Stebbins Bina Decl. ¶ 8. Since Shopify
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`already agreed to provide everything requested by Plaintiffs in their Motion on RFP No. 17 (i.e.,
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`information about a broader set of Shopify Merchants), the Motion is moot as to that RFP and
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`should be denied.
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`b.
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`Shopify Has Proposed A Reasonably Tailored Solution to
`Address RFPs Nos. 20-21 and Rogs. Nos. 9-10.
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`In RFPs Nos. 20-21 and Interrogatories Nos. 9-10, Plaintiffs seek information about the
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`number of “Infringement Notices” Shopify “received via email” and did not “process[,]” but
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`instead “responded with an email informing the submitter” that the Infringement Notice was “not
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`proper” because it was “submitted via email” or reported “multiple Shopify Merchants or multiple
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`copyrights or trademarks.” Dkt. 56-1 at 31-34; Dkt. 56-2 at 19-23. Plaintiffs allege this is relevant
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`because they hope to prove that: (1) copyright owners submit notices of infringement to Shopify
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`via email that comply with the requirements of the DMCA, but (2) rather than “processing” these
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`DMCA-compliant infringement notices, Shopify allegedly “responds” to complainants that the
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`notices need to be resubmitted through Shopify’s online web form, or reformatted and resubmitted
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`without combining “multiple Shopify Merchants or multiple copyrights or trademarks.” Id.
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`As an initial matter, Plaintiffs are mistaken on the facts. As Shopify explained in its
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`Responses, “Shopify creates tickets in its ticketing system, regardless of the manner in which it
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`receives the Infringement Notice—thereby processing each notice.” Dkt. 56-1 at 33; Dkt. 56-2 at
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`23. That is, under Shopify’s policies, in no case would Shopify fail to “process” the notice by
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`creating a ticket—regardless of whether the notice was submitted via email, or contained multiple
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`entries—even if the notice was defective under the DMCA. See id. Accordingly, as Shopify
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`explained in its Responses themselves, “no documents responsive to th[ese] Request[s] exist,” and
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`“the number of Infringement Notices responsive to th[ese] Interrogator[ies] is zero.” Dkt. 56-1 at
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`31-34; Dkt. 56-2 at 19-23. Plaintiffs obviously cannot compel responses to discovery requests as
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`to which Shopify has already responded that no responsive information exists.
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`Plaintiffs have clarified
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`through
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`the meet-and-confer process, however,
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`that
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`notwithstanding the language of the requests, they are trying to explore a slightly different concept
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`here, seeking “information regarding the reason certain tickets were actioned in a certain manner,
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`including by emailing the complainant.” Dkt. 56-1 at 31-34; Dkt. 56-2 at 19-23. In other words,
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`Plaintiffs want to know not only if an infringement notice was “processed,” but how the ticket was
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`actioned by Shopify’s team after processing, and particularly if the initial action taken was a
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`follow-on email to the party who sent the notice. Specifically, Plaintiffs want Shopify to quantify
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`the number of infringement notices that Shopify responded with an email to the sender citing
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`certain enumerated deficiencies, rather than immediately issuing a takedown notice.
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`The problem with this is, as Shopify explained to Plaintiffs, this is not information Shopify
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`classifies in this way in the ordinary course of business, and trying to determine the information
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`Plaintiffs seek requires a qualitative legal analysis of historical information that is both
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`burdensome and imprecise. From December 1, 2018 to March 1, 2022 alone, Shopify has
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`identified “179,889 tickets” relating to infringement. Dkt. 56-1 at 26. There is no automatic way
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`to isolate the tickets Plaintiffs seek, and a linear review of all the individual tickets would be unduly
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`burdensome. At a review rate of, e.g., 200 documents per hour, that would amount to 899 hours
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`of review time. Spending nearly 1,000 hours to manually review 179,889 tickets to respond to just
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`4 of Plaintiffs 72 discovery requests is facially disproportionate. See, e.g., Fed. R. Civ. P. 26(b)(1);
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`Rodríguez-Torres v. Government Dev. Bank of P.R., 265 F.R.D. 40, 44 (D.P.R. 2010) (denying
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`requests in light of “costs” of “review that Defendant . . . will have to undertake on what could
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`turn out to be hundreds or thousands of documents.”).
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`Against that background, Shopify met and conferred with Plaintiffs to try to find a
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`reasonable solution that would permit Shopify to identify the requested information, without
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`performing a manual review of each of the 179,889 tickets relating to infringement (within the
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`limitations period alone). As detailed immediately below, the parties were close to an agreement
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`on a solution on this issue when Plaintiffs unexpectedly filed their Motion on these four discovery
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`requests. Stebbins Bina Decl. ¶ 6.
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`First, Plaintiffs clarified during meet-and-confers that they are not seeking production of
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`the tickets responsive to these four requests, just identification of the number of “Infringement
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`Notices” Shopify “received via email” and did not “process” for the reasons Plaintiffs enumerated
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`in their requests. Stebbins Bina Decl. ¶ 6.
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`Second, Shopify has already agreed to produce information for all tickets associated with
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`the Alleged Merchants since December 2018, over 5,000 tickets, forming a meaningful sample
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`that would allow Plaintiffs to explore this issue themselves, directly. See Bridge v. Credit One
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`Fin., 294 F. Supp. 3d 1019, 1031 (D. Nev. 2018) (approving production of “sample”). Stebbins
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`Bina Decl. ¶ 6
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`Third, and most critically, Plaintiffs and Shopify were in the middle of negotiating search
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`terms that would be most likely to return responsive documents for RFPs Nos. 20-21 and Rogs.
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`Nos. 9-10,5 and thereby allow Shopify to determine, or at least reasonably estimate, the answers
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`to Plaintiffs’ inquiries for the limitations period in full, when Plaintiffs filed their motion. Id.
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`Since the Motion’s filing, Shopify has continued its efforts, and now believes it has
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`identified search terms that are likely to capture the information Plaintiffs are seeking. Stebbins
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`Bina Decl. ¶ 7. Shopify remains ready and willing to confer with Plaintiffs and further refine
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`acceptable search terms. However, Plaintiffs have generally indicated that they do not intend to
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`5 Plaintiffs themselves initially proposed that they could identify to Shopify search terms that
`would allow Shopify to identify responsive tickets. Stebbins Bina Decl. ¶ 6. Shopify agreed that
`this proposal offered a potential way forward to a solution. Plaintiffs proposed search terms in
`writing on April 12, 2022. Dkt. 53-9 at 12. On April 14, 2022, Shopify responded via email that
`“Shopify will discuss with the client the search term results, and if there is a way to reasonably
`provide this information to plaintiffs.” Dkt. 53-9 at 8. Plaintiffs filed this Motion the next day.
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`confer further on discovery that is subject to pending motions. Id. Accordingly, Shopify has begun
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`to implement the search terms on its own in order to provide further responses to RFPs Nos. 20-
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`21 and Rogs. Nos. 9-10, id., as provided for by applicable case law. See, e.g., Treppel v. Biovail
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`Corp., 233 F.R.D. 363, 374 (S.D.N.Y. 2006) (where parties do not stipulate to search methodology,
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`defendant should proceeding “unilaterally, producing all responsive documents located by its
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`search”). Shopify intends to produce information responsive to RFPs Nos. 20-21 and Rogs. Nos.
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`9-10, as their scope has been clarified by Plaintiffs, for the period December 1, 2018 through
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`March 1, 2022, expeditiously following this review. Stebbins Bina Decl. ¶ 7.
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`For all of these reasons, Plaintiffs’ Motion as to RFPs Nos. 20-21 and Rogs. Nos. 9-10 is
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`almost entirely moot. The only remaining question is whether the search procedure that Shopify
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`is applying to its current ticketing system should be applied against records located only in
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`Shopify’s distinct, legacy infringement tracking system, prior to October 2018. For all of the
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`reasons detailed infra in Section C, it should not: Aside from the burden and disproportionality of
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`doing so, see infra at 22-24, Plaintiffs have acceded to (and not moved upon) such temporal
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`restrictions to the limitations period with respect to their Interrogatories that seek similar, parallel
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`information concerning Shopify’s compliance program as a whole. See, e.g., Shopify’s Responses
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`to Rogs. 12, 13, 14 Dkt. 56-2 at 26-27, 30,