Case 1:15-mc-00386-DLC Document 29 Filed 03/01/16 Page 1 of 16

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-------------------------------------- X
:
IN RE APPLICATION OF ELVIS PRESLEY
:
ENTERPRISES LLC FOR AN ORDER TO TAKE
:
DISCOVERY PURSUANT TO 28 U.S.C. § 1782 :
:
-------------------------------------- X

15mc386 (DLC)
OPINION AND ORDER

APPEARANCES:
For the applicant:
Steven C. Douse
King & Ballow
315 Union Street, Suite 1100
Nashville, TN 37201
For the respondent:
Jonathan Michael Sperling
Covington & Burling LLP (NYC)
620 Eighth Avenue
New York, NY 10018
DENISE COTE, District Judge:
The dispute arises from an application to take discovery
for use in a foreign proceeding pursuant to 28 U.S.C. § 1782.
Elvis Presley Enterprises LLC (“EPE”) is party to litigation in
Germany against Arista Music (“Arista”).

EPE seeks to serve a

subpoena on Arista’s affiliate Sony Music Entertainment (“SME”)
to obtain documents that it claims are relevant to the
proceedings in Germany.

For the reasons that follow, EPE’s

application is denied.

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Background
In December 2010, EPE commenced a proceeding against Arista
in the Regional Court of Munich I. 1

In the German proceeding,

EPE sought information as well as equitable remuneration from
Arista.

EPE contends that the amount paid to EPE by Arista is

“grossly disproportionate” to the revenues earned in Germany by
Arista from exploitation of the rights in Elvis Presley sound
recordings.

EPE’s request for information in the German lawsuit

was a substantive cause of action under German law; it was not a
request for discovery in aid of its equitable remuneration claim
because there are no general discovery procedures in Germany
that require document production.
On November 23, 2011, the German court dismissed the
lawsuit.

EPE appealed that dismissal to the Higher Regional

Court of Munich.

On July 18, 2013, the Higher Regional Court

ordered Arista to provide EPE with information that would be
used to calculate EPE’s equitable remuneration claim.

The

information that the German court ordered produced covered the
scope of Arista’s exploitation of Elvis Presley’s recordings
after April 1, 2008.

Arista was ordered to provide at least ten

categories of information, including profits earned as a result

Arista is the legal successor to RCA Records, which has
exploited Elvis Presley’s recordings since 1955. SME is the
licensee of Arista and is its corporate parent.
1

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of exploiting the sound recordings, royalties received, as well
as names and addresses of third party licensees.

This was a

substantive judgment that determined the scope of information to
which EPE was entitled under German law.
The July 2013 judgment became final on September 3, 2013.
Ten months later, in July of 2014, EPE requested that Arista
produce the documents encompassed by the July 2013 judgment.
That fall, Arista delivered responsive documents, including an
Excel spreadsheet.

EPE claims that Arista did not produce all

of the information that the German judgment required and that
there is some indication that the information produced was
inaccurate.

EPE has focused especially on the lack of source

documents to support the information in the Excel spreadsheet.
Much of the information that EPE seeks in its § 1782 application
would, it contends, allow it to verify the information in that
spreadsheet.
On December 30, 2014, EPE resumed the German proceeding in
the German Regional Court and added SME’s German subsidiary as a
party to that proceeding.

In April 2015, the German court

notified the parties that a hearing would be held on December
16, 2015.

On June 23, EPE wrote to Arista requesting that

Arista produce the remainder of the documents it argues were
required by the German court’s order.

Arista wrote back in

August declining to provide any further information.
3

EPE did

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not seek relief in the German court for Arista’s alleged failure
to comply with the judgment; EPE claims that it has no recourse
under German law and cannot obtain additional information in
Germany.
At the December 16 hearing in the German Regional Court,
EPE’s German counsel did not argue that the information it
received from Arista was deficient, nor did its attorneys
mention this § 1782 proceeding.

The German court orally

dismissed all of EPE’s claims and followed up with a written
decision on December 30.

In that decision, the German Regional

Court wrote that EPE was not entitled to equitable remuneration.
Moreover, the German decision mentioned Arista’s obligation to
produce information under the July 2013 judgment.

The December

30 decision did not indicate whether the German court had a view
about the sufficiency of the information Arista produced
pursuant to that judgment.
January 25, 2016.

EPE appealed this dismissal on

That appeal remains pending.

On December 1, 2015, EPE filed the instant application
pursuant to 28 U.S.C. § 1782.

The application was brought

approximately one year after EPE received documents from Arista
and resumed litigation in Germany, and over seven months after
it learned of the December 16 hearing date in Germany.
In this § 1782 application, EPE seeks to obtain fourteen
categories of information stretching back to 2008, some of which
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would require SME to generate new reports and spreadsheets.
Some of the requests are precise while others are broad and
vague.

A conference was held on December 7 at which the Court

declined to grant the § 1782 application and set a briefing
schedule. 2

After extending the briefing schedule to allow the

parties to translate and review the December 30, 2015 German
judgment, the application became fully submitted on February 3,
2016.

On February 11, the Court held a teleconference to

address whether the parties could agree on a narrower
production.

In letters of February 18 and 19, the parties

represented that they could not agree on a narrowly tailored
production and requested that the Court rule on the merits of
the § 1782 application.
Discussion
28 U.S.C. § 1782 provides in relevant part that:
The district court of the district in which a person
. . . is found may order him to give his testimony or
statement or to produce a document or other thing for
use in a proceeding in a foreign . . . tribunal. . . .
The order may be made . . . upon the application of
any interested person and may direct that the
testimony or statement be given, or the document or
other thing be produced, before a person appointed by
the court.
28 U.S.C. § 1782(a).

The statute has three requirements: “(1)

the person from whom discovery is sought resides (or is found)
The Court was then sitting in Part 1 and has retained
jurisdiction over the application.
2

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in the district of the district court to which the application
is made, (2) the discovery be for use in a proceeding before a
foreign tribunal, and (3) the application be made by a foreign
or international tribunal or any interested person.”

Certain

Funds, Accounts &/or Inv. Vehicles v. KPMG, L.L.P., 798 F.3d
113, 117 (2d Cir. 2015) (citation omitted).
Once the three statutory requirements are met, a district
court may use its discretion to order discovery under § 1782.
Id.

The Supreme Court outlined a number of factors that a

district court may consider in deciding whether to exercise this
discretion.

Intel Corp. v. Advanced Micro Devices, Inc., 542

U.S. 241 (2004).

These have become known as the “Intel

factors,” and are:
First, when the person from whom discovery is sought
is a participant in the foreign proceeding the need
for § 1782(a) aid generally is not as apparent as it
ordinarily is when evidence is sought from a
nonparticipant in the matter arising abroad. A
foreign tribunal has jurisdiction over those appearing
before it, and can itself order them to produce
evidence.
Second, a court presented with a § 1782(a) request may
take into account the nature of the foreign tribunal,
the character of the proceedings underway abroad, and
the receptivity of the foreign government or the court
or agency abroad to U.S. federal-court judicial
assistance.
Third, a district court could consider whether the §
1782(a) request conceals an attempt to circumvent
foreign proof-gathering restrictions or other policies
of a foreign country or the United States.
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Finally, unduly intrusive or burdensome requests may
be rejected or trimmed.
Brandi-Dohrn v. IKB Deutsche Industriebank AG, 673 F.3d 76, 8081 (2d Cir. 2012) (citation omitted); Mees v. Buiter, 793 F.3d
291, 298 (2d Cir. 2015) (citation omitted) (listing these four
factors).

In weighing these factors, the Court must “tak[e]

into consideration the ‘twin aims’ of the statute.”
F.3d at 117 (citation omitted).

KPMG, 798

These aims are “providing

efficient means of assistance to participants in international
litigation in our federal courts and encouraging foreign
countries by example to provide similar means of assistance to
our courts.”

Id. (citation omitted).

The parties agree that the three statutory requirements are
met.

SME is located in the Southern District of New York.

The

information sought is for use before a German court, which
indisputably constitutes a foreign tribunal.

Third, EPE is a

party to that foreign proceeding and therefore has an interest
in its outcome.

The analysis here therefore turns on whether

the discretionary Intel factors weigh in favor of granting EPE’s
application.
I.

Whether the Discovery is Within Reach of the German Court
The first Intel factor requires the district court to

consider whether the information sought in the application is
within the jurisdiction of the foreign court.
7

The factor

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distinguishes between discovery from participants in the foreign
proceeding and nonparticipants because “nonparticipants in the
foreign proceeding may be outside the foreign tribunal’s
jurisdictional reach; hence, their evidence, available in the
United States, may be unobtainable absent § 1782(a) aid.”
Intel, 542 U.S. at 264.

This first factor weighs against

applicants who “for all intents and purposes . . . seek[]
discovery from . . . their opponent in the German litigation.”
Schmitz v. Bernstein Liebhard & Lifshitz, LLP., 376 F.3d 79, 85
(2d Cir. 2004) (citing Intel).
This first factor weighs in SME’s favor.

Although SME is

not a party to the German proceeding, Arista is its wholly-owned
subsidiary.

As such, Arista has access to the documents and

information held by SME.

Indeed, SME provided information to

Arista to enable Arista to comply with the German judgment of
July 2013.

Thus, a German court could require Arista to produce

the very information that EPE seeks through this § 1782
application.

Moreover, if EPE believed that Arista’s production

was deficient it could seek a remedy in the German courts, which
includes a fine, as punishment for the failure to comply with
the German judgment compelling Arista to produce information.
EPE could also move for an order requiring a representative of
Arista to certify the accuracy of the information produced.

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EPE has not meaningfully disputed these facts, and it has
not sought relief in the German courts to enforce what it
believes to be the appropriate scope of the July 2013 judgment.
Although it is not required that EPE exhaust its remedies under
German law, the fact that it has not done so here -- when the
information in SME’s possession is fully accessible to Arista -weighs against granting the § 1782 application.
EPE’s principal argument regarding this factor is that the
right to information under German civil procedure is
significantly narrower than the discovery available under the
Federal Rules of Civil Procedure.

The relevance of EPE’s

discussion of general principles of German discovery is not
readily apparent because the July 2013 judgment constituted a
substantive determination about the scope of information to
which EPE was entitled from Arista.

Moreover, the narrower

scope of the substantive right to information under German law
does not effectively respond to the important fact that all of
the information that EPE seeks from SME is available to Arista,
its opponent in the German proceeding.
EPE further contends that, in order to obtain the remedy of
a fine in Germany, it would have to prove that the information
Arista produced was inaccurate or incomplete, which it cannot do
without the information it seeks here.

While this may be true,

EPE has not identified why it believes Arista’s production was
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incomplete or inaccurate.

Indeed, this argument suggests that

Arista’s document production complied, at least facially, with
the July 2013 judgment and that EPE’s desire to obtain further
information rests solely on speculation that information
disclosed in the German production may have been inaccurate.
Thus, EPE has not made any initial showing of Arista’s failure
to comply with the German court’s order that would justify the
issuance of the subpoena here.
II.

Character of the Foreign Proceedings

The second Intel factor requires the district court to
consider the nature of the proceedings abroad and the
receptivity of the foreign court to assistance from United
States federal courts.

On December 16, 2015, the German

Regional Court dismissed EPE’s case and EPE appealed that
dismissal on January 25, 2016.

The parties disagree about

whether any evidence produced pursuant to the § 1782 application
would be admissible in the German appeal.

The parties’ dueling

declarations reveal that the question requires a nuanced
knowledge of German rules of civil procedure.
It is unnecessary to resolve this issue since, even
assuming that materials SME produces to EPE in this proceeding
are admissible in Germany, this factor still weighs against
EPE’s application.

See Mees, 793 F.3d at 304 (this “sort of

inquiry into foreign procedure [] is best minimized for § 1782
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applications”).

The second Intel factor suggests that the

district court broadly consider the “character of the
proceedings underway abroad.”
F.3d at 80.

Id. at 298; Brandi-Dohrn, 673

The parties do not dispute that the German judgment

granting EPE the ability to obtain certain information from
Arista was a substantive judgment related to EPE’s claims for
equitable remuneration.
2013.

That judgment was issued in July of

In late 2014, Arista turned over information that it

asserts complied with the 2013 judgment; much of that
information came from SME, its corporate parent.

In April of

2015 the German court announced that the proceeding would
continue on December 16.

EPE waited until December 1 to file

the instant application in the Southern District of New York.
On December 16, the action for equitable remuneration was
dismissed, and EPE did not argue at that proceeding that
Arista’s production was deficient.

EPE has not sought redress

in the German courts for Arista’s purported failure to comply
with the July 2013 judgment, even though certain avenues for
relief are available. 3
The procedural posture of the German proceedings and EPE’s
delayed § 1782 application weigh against granting the discovery
SME has represented that if the German court were to order it
to produce more materials it would comply with that order. EPE
has not made any showing that SME was disingenuous in that
representation.
3

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it seeks here, even if that information would be admissible in
Germany.

EPE’s counterarguments focus on whether the materials

would be admissible in the German appeal and do not address the
delay in its § 1782 application or how the procedural posture of
the German litigation bears on the second Intel factor.
III. Whether the Request Attempts to Circumvent Foreign Law
The third factor requires a district court to consider
whether the request for materials constitutes an attempt to
circumvent foreign proof-gathering restrictions or other
policies of a foreign country.

There are no general provisions

of German law that require document production in litigation.
This fact alone, however, does not mean that EPE’s attempt to
take discovery here circumvents German law.

After all, “nothing

in the text of § 1782 limits a district court’s production-order
authority to materials that could be discovered in the foreign
jurisdiction if the materials were located there.”

Intel, 542

U.S. at 260 (discussing the statutory requirements, not the
discretionary factors).

See also Mees, 793 F.3d at 303

(emphasizing that there is no foreign discoverability
requirement and nothing that “the availability of the discovery
in the foreign proceeding should not be afforded undue weight”).
A greater showing is required to demonstrate that EPE is
attempting to dodge foreign proof-gathering restrictions.

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The third factor is therefore neutral.

SME argues that EPE

is attempting to use § 1782 to circumvent the July 2013 judgment
of the German court.

It contends that, because the judgment

requiring Arista to disclose information was substantive, EPE’s
attempt to obtain information here escapes the scope of the
German court’s ruling, especially since EPE has not sought
relief available to it in Germany.

EPE contends that, because

Germany’s discovery rules do not affirmatively prohibit the
production of the information it seeks here, this factor is
either neutral or favors granting its application.

Moreover,

EPE argues that it is not attempting to bypass the German
court’s authority; rather, it seeks to verify the reliability of
Arista’s production using information that it contends is only
available to it through the instant proceeding.

Given that §

1782 does not require EPE to exhaust its remedies in Germany,
Mees, 793 F.3d at 303, or to prove that the information would be
admissible or discoverable there, this Intel factor is neutral.
IV.

Request is Unduly Burdensome

The last factor to consider is whether the request at issue
is unduly burdensome or intrusive.

In evaluating whether a

discovery request is “overbroad or unduly burdensome,” the
district court should “apply[] the familiar standards of Rule 26
of the Federal Rules of Civil Procedure.”
302.

Mees, 793 F.3d at

Rule 26(b)(1) provides that the scope of discovery is
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limited to “relevant” material that is “proportional to the
needs of the case . . . and whether the burden or expense of the
proposed discovery outweighs its likely benefit,” among other
factors.
SME has shown that compliance with EPE’s requests would
impose a heavy burden and that many of these requests are only
minimally relevant to the German proceeding or to verification
of the information in the Arista spreadsheet.

EPE seeks

fourteen categories of information, 4 some of which it admits
would require SME to create new documents.

Even though EPE has

agreed to withdraw several of its original requests, many of the
remaining requests require SME to undergo a burdensome process
to generate custom reports and compile its response.
EPE’s arguments to the contrary are not persuasive.

EPE

claims that the information it seeks is of the sort typically
produced for an audit and therefore is not unduly burdensome.
EPE also argues that the information is not overbroad because it
only seeks material that would allow it to decipher the Excel

On February 18, EPE filed a letter purporting to represent the
views of both parties. In that letter, EPE agreed to withdraw
five of these specifications, including three of its requests
that would require SME to produce a new custom report. EPE also
agreed to withdraw request 12 to the extent it is duplicative of
request 6 or information already produced by Arista. SME filed
a letter on February 19 indicating that it did not agree with
how EPE characterized the parties’ discussions.
4

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spreadsheet that Arista produced in connection with the German
proceeding. 5

EPE does not, however, identify any specific

missing or cryptic sections in Arista’s German production, nor
does it connect the alleged deficiencies of that production with
the requests it makes under § 1782.
Ultimately, the four Intel factors show that granting EPE’s
application would not serve the twin aims of § 1782.

Again,

these aims are “providing efficient means of assistance to
participants in international litigation . . . and encouraging
foreign countries by example to provide similar means of
assistance to our courts.”
omitted).

KPMG, 798 F.3d at 117 (citation

EPE’s requested production would be of minimal

assistance in Germany given the procedural posture of that
litigation and the fact that the German court retains
jurisdiction over the July 2013 judgment that defined the scope
of information Arista was obliged to produce.
Although a narrowly-tailored discovery order is preferable
to a complete denial of a § 1782 application, Mees, 793 F.3d at
302, a court may “deny rather than merely limit discovery”
sought under § 1782 where a narrowly tailored discovery order is
not possible.

Schmitz, 376 F.3d at 85; Brandi-Dohrn, 673 F.3d

Indeed, it appears from the December 30, 2015 judgment
dismissing EPE’s claims that the German court was able to use
the spreadsheet to determine that EPE was not entitled to
equitable remuneration.
5

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at 81 (if “a party’s discovery application under section 1782 .
. . unreasonably seeks cumulative or irrelevant materials, the
court is free to deny the application in toto” (citation
omitted)).

On February 11, the Court ordered the parties to

meet and confer in an attempt to narrow the proposed subpoenas
to a mutually agreeable set of document requests.

The parties

were unable to reach agreement and both of them asked the Court
to rule on the merits of § 1782 application.

While the Court

would ordinarily undertake an independent review of a § 1782
request in an attempt to identify a targeted set of particularly
relevant documents whose production would not impose an undue
burden, the Court declines to do so here given the posture of
the German proceedings, the timing of the § 1782 application,
the breadth of EPE’s requests, and EPE’s limited efforts to
narrow its requests.
Conclusion
EPE’s December 1, 2015 application to take discovery
pursuant to 28 U.S.C. § 1782 is denied.

The Clerk of Court

shall close the case.
Dated:

New York, New York
March 1, 2016

__________________________________
DENISE COTE
United States District Judge
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