Preview
KILPATRICK TOWNSEND & STOCKTON LLP
DENNIS L. WILSON (SBN 155407)
DWilson@kilpatricktownsend.com
KOLLIN J. ZIMMERMANN (SBN 273092)
KZimmermann@kilpatricktownsend.com
9720 Wilshire Blvd., PH Suite
Beverly Hills, CA 90212-2018
Telephone: 310-248-3830
Facsimile: 310-860-0363
Attorneys for Plaintiffs/Cross Defendants
YAHOO HOLDINGS, INC., OATH (EMEA) LTD., and
YAHOO! SINGAPORE DIGITAL MARKETING PTE. LTD.
SUPERIOR COURT OF THE STATE OF CALIFORNIA
FOR THE COUNTY OF SANTA CLARA
UNLIMITED JURISDICTI
YAHOO HOLDINGS, INC. Case No. 17
a Delaware corporation; OATH (EMEA)
LTD., an Ireland company; and YAHOO! PLAINTIFFS/CROSS DEFENDANTS
SINGAPORE DIGITAL MARKETING YAHOO HOLDINGS, INC., OATH
PTE. LTD., a Singapore company, (EMEA)LTD., AND YAHOO!
SINGAPOREDIGITAL MARKETING
Plaintiffs, PTE. LTD.’S MEMORANDUM OF POINTS
AND AUTHORITIES IN OPPOSITION TO
MOZILLA CORPORATION'S MOTION
FOR PROTECTIVE ORDER
MOZILLA CORPORATION,
a California corporation, [Concurrently Filed with Dennis L. Wilson
Declaration, Kollin J. Zimmermann
Defendant. Declaration, and Proposed Order]
MOZILLA CORPORATION, Date: May 15, 2018
a California corporation, Time: 9:00 a.m.
Dept: 19
Cross-Complainant, Judge: Hon. Peter Kirwan
YAHOO HOLDINGS, INC. Complaint Filed: December 1, 2017
a Delaware corporation; OATH (EMEA) Cross-Complaint Filed: December 5, 2017
LTD., an Ireland company; and YAHOO!
SINGAPORE DIGITAL MARKETING
PTE. LTD., a Singapore company,
Cross Defendants
PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO
MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER
TABLE OF CONTENTS
INTRODUCTION
II. BACKGROUND
III. ARGUMENT
Mozilla Has Not Established Good Cause for its “Outside
Counsel Only” Limitatio
An “Outside Counsel Only” Limitation is Not
Warranted in This Situation.
Mozilla’s Alleged Harm is Unsupported by Evidence
and Directly Contradicted by Its Prior Position Taken
in This Case.
The Prejudice to Yahoo would be Substantial.
Mozilla Should Not be Permitted to Unilaterally Redact
Information from Relevant Documents.
Yahoo’s Proposed Protective Order Should be Adopted.
IV. CONCLUSION
PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO
MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER
TABLEOF AUTHORITIES
Page(s)
Cases
Archelormittal Cleveland Inc. v. Jewell Coke co., L.P.
No. 1:10 00362, 2010 WL 5230862 (N.D. Ohio Dec. 16, 2010)
Bartholomew v. Avalon Capital Group, Inc.
278 F.R.D. 441 (D. Minn. 2011)
Garcia v. Superior Court
42 Cal. 4th 63 (2007)
GT, Inc. v. Superior Court
151 Cal. App. 3d 748 (Ct. App. 1984)
HR Tech., Inc. v. Imura Int’l U.S.A., Inc.
No. 08JWL, 2011 WL 836734 (D. Kan. Mar. 4, 2011)
Lopez v. Watchtower Bible & Tract Soc’y of New York, Inc.
246 Cal. App. 4th 566 (2016)
ion Powers Midwest, L.P. v. Am. Coal Sales Co.
No. 2:05 555, 2008 WL 4462301 (W.D. Pa. Sept. 30, 2008)
Upton v. McKerrow
No. 1:94 3MHS, 1996, WL 193807 (N.D. Ga. Feb. 20, 1996)
Statutes
Cal. Civ. Proc. Code § 2017.010
Cal. Code Civ. Proc., § 2031.060
California Civ. Proc. Code § 2031.010
California Civ. Proc. Code § 2031.280
Other Authorities
Fed.R.Civ.P. 34
PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO
MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER
Plaintiffs and Cross Defendants Yahoo Holdings, Inc., Oath (Emea) Ltd., and Yahoo!
Singapore Digital Marketing Pte. Ltd. (collectively,“Yahoo”) submit this Opposition to Mozilla
Corporation’s (“Mozilla”) Motion for Protective Order (“Motion”).
INTRODUCTION
Mozilla’s Motion raises two issues for the Court to decide: (1) whether Mozilla should be
permitted to limit the disclosure of a broad range of highly relevant documents to Yahoo’s outside
counsel only, and (2) whether Mozilla should be permitted to go one step further and redact
certain information that it deems irrelevant from those documents, so that not even Yahoo’s
outside counsel could see it. Neither of Mozilla’s positions are warranted here. Mozilla’s Motion
should be denied and Yahoo’s proposed protective order should be issued by the Court.
With respect to Mozilla’s proposed “outside counsel only” limitation, this is not a trade
secret case or a case involving proprietary source code. This is a commercial dispute that does not
warrant an “outside counsel only” limitation. Mozilla’s default search agreement with Google (the
“Google Agreement”), and any emails or other documents relating to the negotiation of or
decision to enter into it, are crucialto Yahoo’s claims. These documents are likely the primary
source of evidence of Mozilla’s true motivation for terminating its default search agreement with
Yahoo (the “Strategic Agreement”), which is a key issue in his case.
Mozilla provides no evidenceto support the alleged harm it claims it will suffer if a limited
number of Yahoo’s in house lawyers involved with the management of this litigation were
allowed access to, for example, Mozilla’s emails comparing the merits of the Google Agreement
versus the Strategic Agreement. This lack of evidence is fatal to Mozilla’s Motion, as a showing
of “good cause” is required. Further, Mozilla’s arguments here are directly contradicted by its
prior statements made in opposition to Yahoo’s motion to seal the Strategic Agreement. Mozilla
previously stated under oath that if its default search agreement with Yahoo were disclosed to the
public at large, “Mozilla would not suffer any significant competitive disadvantage.” Yet now
Mozilla claims that if its default search agreement with Google were disclosed only to Yahoo’s in
house litigation counselwho would be subject to this Court’s protective order and their ethical
duties as attorneysMozilla would be “significantly harmed.” Mozilla’s conflicting positions
PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO
MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER
cannot be reconciled.
While Mozilla has presented no evidence that it would be harmed through limited and
protected disclosure of the Google Agreement and related documents, Yahoo would suffer
substantial prejudice if its in house counsel are not allowed access to documents crucial to this
litigation. Given that there are hundreds of millions of dollars at stake in this case, Yahoo must be
allowed to analyze key evidence and efficiently work with its outside counsel to prosecute its
claims and defend against Mozilla’s counterclaims.
Finally, Mozilla’s position that it has the right to unilaterally determine what it deems
relevant and redact certain portions of documents relating to the Google Agreement should be
rejected. There is no authority for doing so, and courts that have considered this issue have
routinely rejected similar schemes. If a document is relevant and responsive, absent a claim of
privilege or work product, it must be produced in its entirety. Yahoo will determine which
portions of the documents it deems significant. Mozilla has no right to make that determination on
Yahoo’s behalf
Further, Mozilla’s purported justification for its unilateral redactions is that Yahoo’s
outside counsel, Dennis Wilson, “will not be able to unsee the information” in those documents.
What Mozilla is implying is that Mr. Wilson cannot be trusted not toviolate this Court’s
protective order and his ethical obligations as an officer of the Court by disclosing information
about the Google Agreement to his client. The idea that Mr. Wilson would violate this Court’s
order and jeopardize his more than 25 years as a member in good standing of the California Bar is
outrageous. There is no persuasive reason to allow Mozilla to redact any non privileged
information from otherwise relevant and responsive documents. To avoid further motion practice
and additionaldelay in the discovery process, this Court should issue an order prohibiting Mozilla
from doing so.
BACKGROUND
On November 10, 2017, Mozilla sent Yahoo a Notice of Termination letter, stating that it
was terminating its search agreement with Yahoo (the “Strategic Agreement”), effective
immediately.Complaint, ¶ 18. The Strategic Agreement was a more than 50 page, complex
PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO
MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER
commercial contract, which was entered into in December 2014 and would have continued at least
through December 2019, with a substantial monetaryvalue. Just four days later, Mozilla
announced that it had entered into a new search agreement with Google (the “Google Agreement”)
to replace Yahoo as the default search provider for its Firefox browser in the U.S. and other
markets. at ¶
At the heart of this case is whether Mozilla properly terminated the Strategic Agreement
pursuant to Section 9.1.1(b) (the “Change of Control” provision), which was put into play when
Yahoo’s operating business was acquired by Verizon Communications Inc. (“Verizon”) in June
2017. Yahoo contends that Mozilla breached the Strategic Agreement and breached its covenant
of good faith and fair dealing because Mozilla did not have an objectively reasonable or good faith
belief that “the Acquirer’s identity orbusiness practices are likely to harm the Mozilla brand” or
“that the Acquirer intends to operate Yahoo’s Operating Business in a manner that will harm the
quality of the web search or other content experience offered by Yahoo Related Parties to Mozilla
r users of Mozilla products,” as required under the Change of Control provision. . at ¶¶ 27, 33.
Rather than Mozilla terminating the Strategic Agreement because of the Acquirer’s (i.e.,
Verizon’s) identity or business practices, Yahoo contends that Mozilla’s true motivation for
terminating the Strategic Agreement was merely due to its belief that it would be more
advantageous to enter into a default search agreement with Google instead. Accordingly, the
Google Agreement and any meeting notes or emails to/from Google during negotiation of the
Google Agreement, and most importantly any internal Mozilla emails or meeting notes regarding
the negotiation of the Google Agreement or the reasons for entering into it, are crucial evidence
that is highly relevant to Yahoo’s claims. In fact, these documents are likely the primary source of
evidence to determine Mozilla’s true motivations for terminating the Strategic Agreement and
entering into the Google Agreement.
As a result, Yahoo served Mozilla with a targetedset of 11 document requests on January
16, 2018, the first two of which seek the Google Agreement and any documents relating to the
Google Agreement. Zimmermann Decl., ¶ 2, Ex. 1. That same day, Yahoo also provided Mozilla
with a proposed protective order. . at ¶ 3, Ex. 2Yahoo’s proposed protective order is a
PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO
MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER
standard, two tiered protective order, which has been used previously in commercial disputes such
as this one and allows the parties to designate documents as “Confidential” or “Highly
Confidential Attorneys’ Eyes Only.” The key difference between the two designations is that
“Confidential” documents can be shown to “officers, directors, managers, in house counsel and/or
employees of a party to whom it is reasonably necessary to disclose theinformation for this
litigation” whereas “Highly Confidential Attorneys’ Eyes Only” documents are limited to “in
house counsel of a party, who does not have a primarily business role, and to whom disclosure is
reasonably necessary for this litigation.” SeeYahoo’s Proposed Protective Order at ¶¶ 7.a, 8.a,
attached to Yahoo’s Proposed Order, filed concurrently.
Three weeks later, having received no response from Mozilla, Yahoo followed up by email
and explained that “We’d like to get this on file soon, so there is no need for any delay in
Mozilla’s production of documents in response to Yahoo’s discovery requests.” The following
day (Wednesday, February 7) Mozilla requested a call for the next Thursday, February 15, to
discuss this issue. Yahoo requested that the call occur sooner, as Mozilla’s discovery responses
were due on February 20, and Yahoo wanted to resolve this issue as soon as possible to prevent
any delay in Mozilla’s document production. Mozilla responded by offering to have the call one
y earlier, in the afternoon of February 14. Zimmermann Decl., ¶3, Ex. 2.
On February 12, Mozilla provided Yahoo with a redlined version of the proposed
protective order, which included various changes, the most notable of which was the addition of a
third tier of confidentiality, titled “Third Party Confidential Attorneys’ Eyes Only,” which would
limit disclosure of documents to outside counsel only. On February 14 (a month after Yahoo
provided its proposed protective order), the parties’ counsel finally held the first call about this
issue. Mozilla’s counsel stated that they did not believe the Google Agreement or any documents
relating to it were relevant, but if they were going to produce any of them, it would need to be
subject to this third tier “outside counsel only” designation. Yahoo’s counsel explained exactly
why these documents were not only relevant, but central to this case. Yahoo’s counsel also
explained that discussing these types of documents with their primary client contacts is necessary
to develop the strategy and direction of the litigation, so Mozilla’s proposed limitation of
PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO
MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER
excluding in house counsel responsible for the litigation would make the prosecution of this case
unnecessarily difficult and inefficient. The call ended with Mozilla stating that it would
reconsider its position internally and get back to Yahoo as soon as possible. . at ¶ 4.
Nine days later, on February 23, having heard nothing from Mozilla, Yahoo followed up
again. Mozilla responded by requesting another call for February 27. . at ¶ 3, Ex. 2. During
that call, Mozilla stated that it is not willing to remove or edit its proposed third tier of
confidentiality to allow in house counsel responsible for this litigation to access such documents.
Mozilla also stated that it wanted to fully brief this issue through a noticed motion, and it would
not produce any documents related to the Google Agreement until this issue is resolved. Mozilla
also stated that it would seek an order from the Court allowing Mozilla to redact portions of
documents related to the Google Agreement that Mozilla unilaterally determines are not
“relevant,” and that not even Yahoo’s outside counsel, being subject to the protective order, would
be allowed to see the unredacted versions ofsuch documents . Yahoo explained that Mozilla’s
position was unreasonable and unjustified, and that this appears to be a delay tactic designed to
frustrate Yahoo’s ability to analyze key evidence and efficiently prosecute its case.Id. at ¶ 5.
This Motion is now set to be heard on May 15, four months after Yahoo served its targeted
set of document requests focused on the Google Agreement and related documents. Mozilla has
yet to produce any such documents, which has significantly delayed the discovery process and
hindered Yahoo’s ability to prosecute its case.
ARGUMENT
Mozilla Has Not Established Good Cause for its “Outside Counsel Only”
Limitation.
ozilla has not established the required “good cause” for its proposed protective order
limiting disclosure of highly relevant documents to outside counsel only. SeeCal. Code Civ.
Proc., § 2031.060. First, an “outside counsel only” limitation is not warranted here because this is
a commercial dispute that does not involve a trade secret or proprietary source code, which are the
typical situations in which an “outside counsel only” limitation might be considered. Further,
Mozilla has wholly failed to provide any evidenceto support its alleged harm that it claims it
PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO
MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER
would suffer if a select few of Yahoo’s in house counsel responsible for this litigation were able to
access the Google Agreement and related documents. In contrast, the prejudice to Yahoo if its in
house counsel are unable to access these documents would be substantial. Given the hundreds o
millions of dollars at stake in this case, Yahoo’s in house counsel must be allowed access to these
critical documents to properly analyze Yahoo’s claims and prosecute its case.
An “Outside Counsel Only” Limitation is Not Warranted in This
Situation.
Limiting disclosure of documents to outside counsel only is an exception to standard
practice, and it is typically reserved for trade secret cases or cases involving proprietary source
code. Even in those rare circumstances, “outside counsel only” orders arelimited to a very narrow
and particularly identified type of information. A commercial dispute like this one does not
warrant placing such a burden on Yahoo, particularly because Mozilla intends to designate as
“outside counsel only” all documents relating to its Google Agreement, including highly relevant
emails and other documents that are crucial to Yahoo’s claims.
In support of its argument that an “outside counsel only” limitation is warranted here,
Mozilla cites to two stipulated protective orders from unrelated cases and one judicial opinion,
GT, Inc. v. Superior Court, 151 Cal. App. 3d 748 (Ct. App. 1984). None of these support
Mozilla’s argument. First, the two stipulated protective orders are just that stipulated protective
orders. They provide no analysis of whether an “outside counsel only” limitation was justified in
those cases. They merely indicate that, for whatever reason, the parties determined that for those
particular cases it would be acceptable to have such a limitation. Yahoo does not agree to such a
limitation, so these stipulated protective orders provide no guidance. If simply identifying prior
stipulated protective orders that did not include an “outside counsel only” limitation were
persuasive, Yahoo could provide the Court with hundreds, but there would be no pointbecause
this situation is not analogous
Second, in GT, Inc., the appellate court affirmed a protective order limiting production of
certain financial information to “counsel only.” See GT, Inc., 151 Cal. App. 3d at 755. The
opinion makes no distinction between in house counsel or outside counsel. From the context of
PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO
MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER
the opinion, it appears that the party seeking disclosure did not have in house counsel. This
distinction is significant. Had the party employed in house counsel who did not have a primarily
business role and who was responsible for managing the company’s litigation, the analysis and
likely the ultimate result would have been different. Thus, the decision is inapplicable. But
even if it wereapp licable, theopinion was still primarily about the issue of punitive damages, and
as theappellate court explained:
A protective order is easy to justify where financial information is needed for
punitive damages, because the client has little need to know the information when
preparing his case on the liability question. However, where the financial
information goes to the heart of the cause of action itself, a litigant should not be
denied access so easily
. at 754 (emphasis added).
Here, the Google Agreement and related documents go to the heartof Yahoo’s claims, and
Yahoo is not seeking to disclose such documents to everyone at the company. Yahoo is merely
requesting that its in house counsel who are involved with the management of thislitigation be
allowed access, to enable Yahoo to properly analyze and prosecute its case and defend against
Mozilla’s counterclaims. An “outside counsel only” limitation is not warranted here.
Mozilla’s Alleged Harm is Unsupported by Evidence and Directly
Contradicted by Its Prior Position Taken in This Case.
Mozilla provides zeroevidence of the alleged harm it would suffer if a limited number of
Yahoo in house lawyersall of whom would be bound by this Court’s protective order and their
ethical duties as attorneyswere able to see the Google Agreement and related emails and other
documents. The lack of any declaration from someone at Mozilla explaining specifically how this
limited disclosure would harm Mozilla is a fatal flaw in Mozilla’s Motion. Mozilla has wholly
failed to provide evidence sufficient to establish good cause for its “outside counsel only”
limitation, as required under Cal. Civ. Proc. Code § 2031.060.To the extent Mozilla tries to
remedy this fatal flaw by submitting a declaration in connection with its reply brief, doing so
would be improper and prejudicial, and the declaration should be excluded. SeeJay v. Mahaffey
218 Cal. App. 4th 1522, 1537 (2013) (affirming exclusion of declarations submitted for first time
PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO
MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER
on reply, and explaining that “The general rule of motion practice, which applies here, is that new
evidence is not permitted with reply papers.”)
Even though unsupported by any evidence, Mozilla offers the conclusion that it “faces a
significant risk of harm if Yahooinsiders get access to the pricing and other business terms of its
deal with other search providers.” Motion, 8:12 13. But this argument is directly contradicted by
statements made by Mozilla in opposition to Yahoo’s motion to seal its complaint. There, Yahoo
sought to seal the Strategic Agreement from public view to limit its exposure to business focused
employees of its competitors and other business partners. Mozilla opposed Yahoo’s motion to
seal and submitted a declaration of Denelle Dixon, its Chief Business and Legal Officer, stating
the following:
Mozilla has no interest in maintaining the confidentiality of the terms of the Strategic
Agreement. If the terms of the Strategic Agreement were made public, Mozilla
would not suffer any significant competitive disadvantage, especially as the terms of
the agreement were negotiated over three years ago with a company that no longer
exists as an independent entity.
Zimmermann Decl.,¶ 6, Ex. 3(emphasis added).
Mozilla’s admission that the disclosure of the Strategic Agreement to the public at large
would not cause “any significant competitive disadvantage” cannot be reconciled with its current
position that the mere disclosure of the Google Agreement to a select few in house counsel
responsible for this litigation would cause it significant harm. That the Strategic Agreement was
negotiated a few years ago is immaterial because the terms of the agreement were active less than
six months ago, and they would have remained active until at least December 2019. And the fact
that Yahoo’s operating business since has been acquired by Verizon is irrelevantthe agreement
had no less significance or efficacy as a result of the acquisition.
Mozilla’s unsupported and conclusory claims of “competitive harm” ring hollow. Its
argument is belied by its prior position taken in this case, and it has wholly failed to establish the
good cause required to justify a disfavored “outside counsel only” limitation. Mozilla’s Motion
should be denied on this ground alone.
PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO
MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER
The Prejudice to Yahoo would be Substantial.
In contrast to the lack of harm to Mozilla, Yahoo faces substantial prejudice if its in house
counsel who are involved with the management of this litigation are unable to access highly
relevant documents regarding key issuesThe Google Agreement, and any emails or other
documents relating to the negotiation of or decision to enter into the Google Agreement, are likely
the primary source of evidence of Mozilla’s true intent behind terminating the Strategic
Agreement. As Mozilla’s true intent in terminating is a case dispositive issue, Mozilla should not
be permitted to shield this evidence from Yahoo’s in house counsel. Access to such information
is necessary to evaluate the viability of Yahoo’s claims and determine its strategic approach to the
prosecution of this case. Without such access, Yahoo would be forced to rely solely on the
perceptions of its outside counsel, without any ability to evaluate the evidence for itself or provide
any input or context that could help shape the decision making process. Given the complexity of
the Strategic Agreement, and the likely complexity of the Google Agreement, input and guidance
from Yahoo’s in house counsel is crucial. If the Court has concerns regarding the number of in
house lawyers who would have accessYahoo is willing to limit that number to one lawyer.
Mozilla flippantly suggests that any harm to Yahoo based on this “outside counsel only”
designation can be remedied, because “Should Yahoo’s counsel believe that the designations are
improper, the proposed protective order provides a mechanism for de designation of documents.”
Motion, 8:23 34. But this does not allay Yahoo’s concerns. First, given that Mozilla has already
taken the position that the Google Agreementand any related documents are irrelevant, and that
the disclosure of any such documents, even to a select few Yahoo in house lawyers, would cause it
substantial harm, it is highly unlikely that Mozilla would agree to de designate any such
documents upon Yahoo’s request. And once Yahoo’s request is denied, Yahoo’s outside counsel
would be forced to decide whether to bear the burden and expense of filing a motion to compel,
just so that they could show a particular document to their client.
Moreover, forcing Yahoo’s counsel to request Mozilla’s permission to de designate
documents that it would like to share with its client would be an unwarranted intrusion on Yahoo’s
litigation strategy. This would effectively serve as a running dialogue between Yahoo’s counsel
PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO
MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER
and Mozilla’s counsel, where Yahoo’s counsel would be forced to repeatedly notify Mozilla’s
counsel of the documents it identifies and deems significant enough to warrant a request for
sclosure to its client. Such an inefficient and prejudicial intrusion is unjustified here.
Mozilla Should Not be Permitted to Unilaterally Redact Information from
Relevant Documents.
espite failing to justify limiting the disclosure of the Google Agreement and related
documents to Yahoo’s outside counsel, Mozilla goes one step further and states that it will also
redact certain information that it unilaterally deems irrelevant from otherwise relevant and
responsive documents so that not even Yahoo’s outside counsel can see those portions of relevant
documents. This should not be permitted. California Civ. Proc. Code § 2031.010 contemplates
the production of “documents,” not portions of documents or certain paragraphs or sentences of
documents that the producing party deems relevant. California Civ. Proc. Code § 2
requires that documents be produced “as they are kept in the usual course of business, or be
organized and labeled to correspond with the categories in the demand.” (emphasis added).
Nowhere does the California Civil Procedure Code or the case lawpermit the unilateral redaction
of information from relevant documents because the producing party deems those portions
irrelevant. And, Mozilla cites no authority for doing so.
Redaction is permitted in very limited circumstances to protect against disclosure of
attorney client privilege or work product, or sometimes to protect personally identifying
information of third party individuals, such as names, birth dates, and Social Security numbers.
See, e.g.Lopez v. Watchtower Bible & Tract Soc'y of New York, Inc., 246 Cal. App. 4th 566, 598
(2016) (permitting redaction of names, birth dates, and Social Security numbers to protect privacy
interests of third party individuals); Garcia v. Superior Court, 42 Cal. 4th 63, 73 (2007) (ordering
the redaction of “privileged material”). Redaction based on unilateral “relevance” determinations
has been routinely rejected by numerous courts around the country. See, e.g., HR Tech., Inc. v.
Imura Int’l U.S.A., Inc., No. 08JWL, 2011 WL 836734, at *1 (D. Kan. Mar . 4, 2011)
(affirming prior rejection of “plaintiff's argument that it could redact non responsive portions of
otherwise responsive documents” and affirming order requiring plaintiff to “produce any redacted
PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO
MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER
documents in their entirety”); Bartholomew v. Avalon Capital Group, Inc., 278 F.R.D. 441, 451
52 (D. Minn. 2011) (“It is rare that a document contains only relevant information. . . .
Fed.R.Civ.P. 34 concerns the discovery of ‘documents’; it does not concern the discovery of
individual pictures, graphics, paragraphs, sentences, words within those documents.”);
Archelormittal Cleveland Inc. v. Jewell Coke co., L.P., No. 1:10 00362, 2010 WL 5230862, at
*3 (N.D. Ohio Dec. 16, 2010) (“[T]he language of Rule 34 discusses production of ‘documents,’
rather than pages or sentences.”); Upton v. McKerrow, No. 1:94 353MHS, 1996, WL 193807,
*5 (N.D. Ga. Feb. 20, 1996) (granting plaintiff’s motion to compel, requiring defendant to produce
unredacted copies of responsive documents)Orion Powers Midwest, L.P. v. Am. Coal Sales Co.
No. 2:05 555, 2008 WL 4462301, at *2 (W.D. Pa. Sept. 30, 2008) (holding that redaction is not
allowed).
Mozilla tries to assuage Yahoo’s concerns by stating that “Mozilla commits to working
with Yahoo in explaining the nature of the redactions to assure Yahoo that redacted information is
not necessary to try this case.” Motion, 8:6 7. But this is a fruitless gesture for two reasons. First,
the standard for discovery is not whether the information is “necessary to try this case.” Yahoo is
entitled to any information that “appears reasonably calculated to lead to the discovery of
admissible evidence.” Cal. Civ. Proc. Code § 2017.010.
Second, Mozilla cannot be empowered to unilaterally determine what it deems “relevant”
to this dispute, as the parties disagree as to what is relevant. After explaining Yahoo’s position
that the Google Agreement andrelated documents are central to this case, Mozilla states, “Mozilla
disagrees that these documents are relevant.” Motion, 3:24. Mozilla goes on, “Mozilla’s
motivation in exercising its rights under the Strategic Agreement simply does not matter.”
Motion, 4:2 3. This could not be more incorrect. Whether Mozilla had an objectively reasonable
or good faith belief in exercising its rightsunder the Change of Control provision and terminating
the Strategic Agreement is a case dispositive issue. The Google Agreement, and any emails
relating to the negotiation of or decision to enter into it, are likely the primary source of evidence
of Mozilla’s true motivation for doing so. That Mozilla claims these documents are irrelevant is
confusing at best, and a calculated attempt to shield crucial and damaging evidence from being
PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO
MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER
disclosed at worst. Either way, Yahoo has a right to access these documents in their entirety, and
it should not be forced to rely on partially redacted versions of potentially case dispositive
evidence.
Moreover, Yahoo takes issue with the rationale behind Mozilla’s purported need to redact
these documents. Mozilla states, “It is simply a fact that Yahoo’s outside counsel in this case,
including long time counsel Dennis Wilson [], will not be able to unsee the information they see in
these documents.” Motion, 8:1 3. What Mozilla is implying is that because Mr. Wilson has
represented Yahoo in other litigation matters, Mr. Wilson cannot be trusted not to violate this
Court’s protective order and his ethical obligations as an officer of the Court by disclosing
information about the Google Agreement to his client. This is insulting. Mr. Wilson has every
intention of abiding by this Court’s protective order and maintaining his status as a member in
ood standing of the California Bar for more than 25 years.Wilson Decl., ¶ Mozilla’s indirect
accusations are offensive and unprofessional. There is no legitimate reason to justify redacting
these highly relevant documents from Yahoo’s outside counsel.
Mozilla tries to put off review of this issue by the Court, claiming that “it is not ripe for
adjudication.” Motion, 7:26.Yahoo disagrees. Mozilla has already announced its intention to
apply redactions, and it has even specified the type of documents it intends to redact and the
purported reasons for doing so. As explained above, there is no basis on which Mozilla shouldbe
permitted to redact what it unilaterally determines is irrelevant to this dispute. Yahoo respectfully
requests that this Court issue an order stating this. Otherwise, Mozilla will proceed with
producing its redacted documents, and the parties will beback before the Court on a motion to
compel several months later. Mozilla has already delayed producing these crucial documents for
four months. Yahoo would like to avoid any further delays.
Yahoo’s Proposed Protective Order Should be Adopted.
hile theprimary difference between the parties’ proposed protective orders is Mozilla’s
unjustified addition of an “outside counsel only” limitation, the remaining differences should also
be resolved in Yahoo’s favor. In particular, Paragraph 13 of Mozilla’s proposed protective order
would require anyone, including in house counsel and the parties’ other employees, who accesses
PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO
MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER
any information designated Confidential or Highly ConfidentialAttorneys’ Eyes Only to sign
the separate Confidentiality Agreement attached to the protective order, except for outside counsel
of record and the Court and its employees.
But requiring anyone that accesses any designated documentswhich will likely include
nearly every document producedto personally sign the separate Confident iality Agreement is
unnecessary. As is standard practice, Yahoo’s proposed protective order limits this extra burden
only to outside consultants/experts, employees of third party service bureaus, and witnesses to
whom disclosure is reasonably necessary. house counsel and the parties’ other employees are
bound by the Court’s protective order by virtue of the fact that their respective companies are
parties to this case, so there is no need to execute and maintain a separate Confidentiality
Agreement from each of them.
The remaining difference between the parties’ proposed protective orders is that Yahoo
would limit the disclosure of designated information to people “to whom disclosure is reasonably
necessary for this litigation,” while Mozilla would limit it to people “actively working on the
litigation with responsibility for the preparation and trial of the action.” It is unclear what, if any,
difference Mozilla’s proposed limitation would make. But to the extent there is any significant
difference, Yahoo’s proposed language should be used, as there are reasons to access designated
information beyond merely preparing for trialsuch as evaluating key evidence for the purpose of
assessing potential settlement. Yahoo’s proposed limitation provides adequate protection by
limiting disclosure to those people to whom it is reasonably necessary for this litigation.
Accordingly, Yahoo respectfully requests that the Court adopt its proposed protective order.
PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO
MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER
IV. CONCLUSION
For the foregoing reasons, Yahoo respectfully requests that the Court deny Mozilla’s
Motion and adopt Yahoo’s proposed protective order. Yahoo further requests that the Court issue
an order stating that Mozilla cannot unilaterally redact information that it deems irrelevant from
otherwise relevant and responsive documents.
DATED: May 2, 2018 Respectfully submitted,
KILPATRICK TOWNSEND & STOCKTON LLP
By:
DENNIS L. WILSON
KOLLIN J. ZIMMERMANN
Attorneys for Plaintiffs/Cross Defendants
YAHOO HOLDINGS, INC., OATH (EMEA)
LTD, and YAHOO! SINGAPORE DIGITAL
MARKETING PTE. LTD.
PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO
MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER
PROOF OF SERVICE
Yahoo Holdings, Inc., et al. v. Mozilla Corporation
Santa Clara Superior Court Case No. 17 319921
I, the undersigned, state that I am and was at all times herein mentioned a resident of the
County of Los Angeles, over the age of eighteen (18) years and not a party to the within action
or proceeding. My business address is 9720 Wilshire Boulevard, Penthouse Suite, Beverly
Hills, California 90212 and I am employed in the offices of Kilpatrick Townsend & Stockton
LLP by a member of the Bar of this Court at whose direction the service mentioned herein
below was made.
On May 2 I served the following document(s):
PLAINTIFFS/CROSS DEFENDANTS YAHOO HOLDINGS, INC., OATH (EMEA)
LTD., AND YAHOO! SINGAPORE DIGITAL MARKETING PTE. LTD.’S
MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO
MOZILLA CORPORATION'S MOTION FOR PROTECTIVE ORDER
upon the interested parties in this action by placing the copy thereof in an envelope addressed as
follows:
Gregory D. Call Emily T. Kuwahara
Kristin J. Madigan CROWELL & MORING LLP
CROWELL & MORING LLP 515 S. Flower St., 40 Floor
3 Embarcadero Center, 26 Floor Los Angeles, CA 90071
San Francisco, CA 94111 Tel: (213) 622.4750
Tel: (415) 986 Fax: (213) 622
Fax: (415) 986 Email: ekuwahara@crowell.com
Email: gcall@crowell.com
kmadigan@crowell.com
[X] (BY OVERNIGHT DELIVERY) I am readily familiar with the practice of
Kilpatrick Townsend & Stockton, LLP for collection and processing of documents for
overnight delivery and know that the document(s) described herein will be deposited in a box or
other facility regularly maintained by Federal Express, UPS, DHL or the like, or by Express
Mail via the United States Postal Service.
I declare under penalty of perjury under the laws of the State of California that the above
is true and correct.
Executed onMay 2 , 2018, at Beverly Hills, California.
PROOF OF SERVICE
Preview
KILPATRICK TOWNSEND & STOCKTON LLP DENNIS L. WILSON (SBN 155407) DWilson@kilpatricktownsend.com KOLLIN J. ZIMMERMANN (SBN 273092) KZimmermann@kilpatricktownsend.com 9720 Wilshire Blvd., PH Suite Beverly Hills, CA 90212-2018 Telephone: 310-248-3830 Facsimile: 310-860-0363 Attorneys for Plaintiffs/Cross Defendants YAHOO HOLDINGS, INC., OATH (EMEA) LTD., and YAHOO! SINGAPORE DIGITAL MARKETING PTE. LTD. SUPERIOR COURT OF THE STATE OF CALIFORNIA FOR THE COUNTY OF SANTA CLARA UNLIMITED JURISDICTI YAHOO HOLDINGS, INC. Case No. 17 a Delaware corporation; OATH (EMEA) LTD., an Ireland company; and YAHOO! PLAINTIFFS/CROSS DEFENDANTS SINGAPORE DIGITAL MARKETING YAHOO HOLDINGS, INC., OATH PTE. LTD., a Singapore company, (EMEA)LTD., AND YAHOO! SINGAPOREDIGITAL MARKETING Plaintiffs, PTE. LTD.’S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOZILLA CORPORATION'S MOTION FOR PROTECTIVE ORDER MOZILLA CORPORATION, a California corporation, [Concurrently Filed with Dennis L. Wilson Declaration, Kollin J. Zimmermann Defendant. Declaration, and Proposed Order] MOZILLA CORPORATION, Date: May 15, 2018 a California corporation, Time: 9:00 a.m. Dept: 19 Cross-Complainant, Judge: Hon. Peter Kirwan YAHOO HOLDINGS, INC. Complaint Filed: December 1, 2017 a Delaware corporation; OATH (EMEA) Cross-Complaint Filed: December 5, 2017 LTD., an Ireland company; and YAHOO! SINGAPORE DIGITAL MARKETING PTE. LTD., a Singapore company, Cross Defendants PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER TABLE OF CONTENTS INTRODUCTION II. BACKGROUND III. ARGUMENT Mozilla Has Not Established Good Cause for its “Outside Counsel Only” Limitatio An “Outside Counsel Only” Limitation is Not Warranted in This Situation. Mozilla’s Alleged Harm is Unsupported by Evidence and Directly Contradicted by Its Prior Position Taken in This Case. The Prejudice to Yahoo would be Substantial. Mozilla Should Not be Permitted to Unilaterally Redact Information from Relevant Documents. Yahoo’s Proposed Protective Order Should be Adopted. IV. CONCLUSION PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER TABLEOF AUTHORITIES Page(s) Cases Archelormittal Cleveland Inc. v. Jewell Coke co., L.P. No. 1:10 00362, 2010 WL 5230862 (N.D. Ohio Dec. 16, 2010) Bartholomew v. Avalon Capital Group, Inc. 278 F.R.D. 441 (D. Minn. 2011) Garcia v. Superior Court 42 Cal. 4th 63 (2007) GT, Inc. v. Superior Court 151 Cal. App. 3d 748 (Ct. App. 1984) HR Tech., Inc. v. Imura Int’l U.S.A., Inc. No. 08JWL, 2011 WL 836734 (D. Kan. Mar. 4, 2011) Lopez v. Watchtower Bible & Tract Soc’y of New York, Inc. 246 Cal. App. 4th 566 (2016) ion Powers Midwest, L.P. v. Am. Coal Sales Co. No. 2:05 555, 2008 WL 4462301 (W.D. Pa. Sept. 30, 2008) Upton v. McKerrow No. 1:94 3MHS, 1996, WL 193807 (N.D. Ga. Feb. 20, 1996) Statutes Cal. Civ. Proc. Code § 2017.010 Cal. Code Civ. Proc., § 2031.060 California Civ. Proc. Code § 2031.010 California Civ. Proc. Code § 2031.280 Other Authorities Fed.R.Civ.P. 34 PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER Plaintiffs and Cross Defendants Yahoo Holdings, Inc., Oath (Emea) Ltd., and Yahoo! Singapore Digital Marketing Pte. Ltd. (collectively,“Yahoo”) submit this Opposition to Mozilla Corporation’s (“Mozilla”) Motion for Protective Order (“Motion”). INTRODUCTION Mozilla’s Motion raises two issues for the Court to decide: (1) whether Mozilla should be permitted to limit the disclosure of a broad range of highly relevant documents to Yahoo’s outside counsel only, and (2) whether Mozilla should be permitted to go one step further and redact certain information that it deems irrelevant from those documents, so that not even Yahoo’s outside counsel could see it. Neither of Mozilla’s positions are warranted here. Mozilla’s Motion should be denied and Yahoo’s proposed protective order should be issued by the Court. With respect to Mozilla’s proposed “outside counsel only” limitation, this is not a trade secret case or a case involving proprietary source code. This is a commercial dispute that does not warrant an “outside counsel only” limitation. Mozilla’s default search agreement with Google (the “Google Agreement”), and any emails or other documents relating to the negotiation of or decision to enter into it, are crucialto Yahoo’s claims. These documents are likely the primary source of evidence of Mozilla’s true motivation for terminating its default search agreement with Yahoo (the “Strategic Agreement”), which is a key issue in his case. Mozilla provides no evidenceto support the alleged harm it claims it will suffer if a limited number of Yahoo’s in house lawyers involved with the management of this litigation were allowed access to, for example, Mozilla’s emails comparing the merits of the Google Agreement versus the Strategic Agreement. This lack of evidence is fatal to Mozilla’s Motion, as a showing of “good cause” is required. Further, Mozilla’s arguments here are directly contradicted by its prior statements made in opposition to Yahoo’s motion to seal the Strategic Agreement. Mozilla previously stated under oath that if its default search agreement with Yahoo were disclosed to the public at large, “Mozilla would not suffer any significant competitive disadvantage.” Yet now Mozilla claims that if its default search agreement with Google were disclosed only to Yahoo’s in house litigation counselwho would be subject to this Court’s protective order and their ethical duties as attorneysMozilla would be “significantly harmed.” Mozilla’s conflicting positions PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER cannot be reconciled. While Mozilla has presented no evidence that it would be harmed through limited and protected disclosure of the Google Agreement and related documents, Yahoo would suffer substantial prejudice if its in house counsel are not allowed access to documents crucial to this litigation. Given that there are hundreds of millions of dollars at stake in this case, Yahoo must be allowed to analyze key evidence and efficiently work with its outside counsel to prosecute its claims and defend against Mozilla’s counterclaims. Finally, Mozilla’s position that it has the right to unilaterally determine what it deems relevant and redact certain portions of documents relating to the Google Agreement should be rejected. There is no authority for doing so, and courts that have considered this issue have routinely rejected similar schemes. If a document is relevant and responsive, absent a claim of privilege or work product, it must be produced in its entirety. Yahoo will determine which portions of the documents it deems significant. Mozilla has no right to make that determination on Yahoo’s behalf Further, Mozilla’s purported justification for its unilateral redactions is that Yahoo’s outside counsel, Dennis Wilson, “will not be able to unsee the information” in those documents. What Mozilla is implying is that Mr. Wilson cannot be trusted not toviolate this Court’s protective order and his ethical obligations as an officer of the Court by disclosing information about the Google Agreement to his client. The idea that Mr. Wilson would violate this Court’s order and jeopardize his more than 25 years as a member in good standing of the California Bar is outrageous. There is no persuasive reason to allow Mozilla to redact any non privileged information from otherwise relevant and responsive documents. To avoid further motion practice and additionaldelay in the discovery process, this Court should issue an order prohibiting Mozilla from doing so. BACKGROUND On November 10, 2017, Mozilla sent Yahoo a Notice of Termination letter, stating that it was terminating its search agreement with Yahoo (the “Strategic Agreement”), effective immediately.Complaint, ¶ 18. The Strategic Agreement was a more than 50 page, complex PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER commercial contract, which was entered into in December 2014 and would have continued at least through December 2019, with a substantial monetaryvalue. Just four days later, Mozilla announced that it had entered into a new search agreement with Google (the “Google Agreement”) to replace Yahoo as the default search provider for its Firefox browser in the U.S. and other markets. at ¶ At the heart of this case is whether Mozilla properly terminated the Strategic Agreement pursuant to Section 9.1.1(b) (the “Change of Control” provision), which was put into play when Yahoo’s operating business was acquired by Verizon Communications Inc. (“Verizon”) in June 2017. Yahoo contends that Mozilla breached the Strategic Agreement and breached its covenant of good faith and fair dealing because Mozilla did not have an objectively reasonable or good faith belief that “the Acquirer’s identity orbusiness practices are likely to harm the Mozilla brand” or “that the Acquirer intends to operate Yahoo’s Operating Business in a manner that will harm the quality of the web search or other content experience offered by Yahoo Related Parties to Mozilla r users of Mozilla products,” as required under the Change of Control provision. . at ¶¶ 27, 33. Rather than Mozilla terminating the Strategic Agreement because of the Acquirer’s (i.e., Verizon’s) identity or business practices, Yahoo contends that Mozilla’s true motivation for terminating the Strategic Agreement was merely due to its belief that it would be more advantageous to enter into a default search agreement with Google instead. Accordingly, the Google Agreement and any meeting notes or emails to/from Google during negotiation of the Google Agreement, and most importantly any internal Mozilla emails or meeting notes regarding the negotiation of the Google Agreement or the reasons for entering into it, are crucial evidence that is highly relevant to Yahoo’s claims. In fact, these documents are likely the primary source of evidence to determine Mozilla’s true motivations for terminating the Strategic Agreement and entering into the Google Agreement. As a result, Yahoo served Mozilla with a targetedset of 11 document requests on January 16, 2018, the first two of which seek the Google Agreement and any documents relating to the Google Agreement. Zimmermann Decl., ¶ 2, Ex. 1. That same day, Yahoo also provided Mozilla with a proposed protective order. . at ¶ 3, Ex. 2Yahoo’s proposed protective order is a PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER standard, two tiered protective order, which has been used previously in commercial disputes such as this one and allows the parties to designate documents as “Confidential” or “Highly Confidential Attorneys’ Eyes Only.” The key difference between the two designations is that “Confidential” documents can be shown to “officers, directors, managers, in house counsel and/or employees of a party to whom it is reasonably necessary to disclose theinformation for this litigation” whereas “Highly Confidential Attorneys’ Eyes Only” documents are limited to “in house counsel of a party, who does not have a primarily business role, and to whom disclosure is reasonably necessary for this litigation.” SeeYahoo’s Proposed Protective Order at ¶¶ 7.a, 8.a, attached to Yahoo’s Proposed Order, filed concurrently. Three weeks later, having received no response from Mozilla, Yahoo followed up by email and explained that “We’d like to get this on file soon, so there is no need for any delay in Mozilla’s production of documents in response to Yahoo’s discovery requests.” The following day (Wednesday, February 7) Mozilla requested a call for the next Thursday, February 15, to discuss this issue. Yahoo requested that the call occur sooner, as Mozilla’s discovery responses were due on February 20, and Yahoo wanted to resolve this issue as soon as possible to prevent any delay in Mozilla’s document production. Mozilla responded by offering to have the call one y earlier, in the afternoon of February 14. Zimmermann Decl., ¶3, Ex. 2. On February 12, Mozilla provided Yahoo with a redlined version of the proposed protective order, which included various changes, the most notable of which was the addition of a third tier of confidentiality, titled “Third Party Confidential Attorneys’ Eyes Only,” which would limit disclosure of documents to outside counsel only. On February 14 (a month after Yahoo provided its proposed protective order), the parties’ counsel finally held the first call about this issue. Mozilla’s counsel stated that they did not believe the Google Agreement or any documents relating to it were relevant, but if they were going to produce any of them, it would need to be subject to this third tier “outside counsel only” designation. Yahoo’s counsel explained exactly why these documents were not only relevant, but central to this case. Yahoo’s counsel also explained that discussing these types of documents with their primary client contacts is necessary to develop the strategy and direction of the litigation, so Mozilla’s proposed limitation of PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER excluding in house counsel responsible for the litigation would make the prosecution of this case unnecessarily difficult and inefficient. The call ended with Mozilla stating that it would reconsider its position internally and get back to Yahoo as soon as possible. . at ¶ 4. Nine days later, on February 23, having heard nothing from Mozilla, Yahoo followed up again. Mozilla responded by requesting another call for February 27. . at ¶ 3, Ex. 2. During that call, Mozilla stated that it is not willing to remove or edit its proposed third tier of confidentiality to allow in house counsel responsible for this litigation to access such documents. Mozilla also stated that it wanted to fully brief this issue through a noticed motion, and it would not produce any documents related to the Google Agreement until this issue is resolved. Mozilla also stated that it would seek an order from the Court allowing Mozilla to redact portions of documents related to the Google Agreement that Mozilla unilaterally determines are not “relevant,” and that not even Yahoo’s outside counsel, being subject to the protective order, would be allowed to see the unredacted versions ofsuch documents . Yahoo explained that Mozilla’s position was unreasonable and unjustified, and that this appears to be a delay tactic designed to frustrate Yahoo’s ability to analyze key evidence and efficiently prosecute its case.Id. at ¶ 5. This Motion is now set to be heard on May 15, four months after Yahoo served its targeted set of document requests focused on the Google Agreement and related documents. Mozilla has yet to produce any such documents, which has significantly delayed the discovery process and hindered Yahoo’s ability to prosecute its case. ARGUMENT Mozilla Has Not Established Good Cause for its “Outside Counsel Only” Limitation. ozilla has not established the required “good cause” for its proposed protective order limiting disclosure of highly relevant documents to outside counsel only. SeeCal. Code Civ. Proc., § 2031.060. First, an “outside counsel only” limitation is not warranted here because this is a commercial dispute that does not involve a trade secret or proprietary source code, which are the typical situations in which an “outside counsel only” limitation might be considered. Further, Mozilla has wholly failed to provide any evidenceto support its alleged harm that it claims it PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER would suffer if a select few of Yahoo’s in house counsel responsible for this litigation were able to access the Google Agreement and related documents. In contrast, the prejudice to Yahoo if its in house counsel are unable to access these documents would be substantial. Given the hundreds o millions of dollars at stake in this case, Yahoo’s in house counsel must be allowed access to these critical documents to properly analyze Yahoo’s claims and prosecute its case. An “Outside Counsel Only” Limitation is Not Warranted in This Situation. Limiting disclosure of documents to outside counsel only is an exception to standard practice, and it is typically reserved for trade secret cases or cases involving proprietary source code. Even in those rare circumstances, “outside counsel only” orders arelimited to a very narrow and particularly identified type of information. A commercial dispute like this one does not warrant placing such a burden on Yahoo, particularly because Mozilla intends to designate as “outside counsel only” all documents relating to its Google Agreement, including highly relevant emails and other documents that are crucial to Yahoo’s claims. In support of its argument that an “outside counsel only” limitation is warranted here, Mozilla cites to two stipulated protective orders from unrelated cases and one judicial opinion, GT, Inc. v. Superior Court, 151 Cal. App. 3d 748 (Ct. App. 1984). None of these support Mozilla’s argument. First, the two stipulated protective orders are just that stipulated protective orders. They provide no analysis of whether an “outside counsel only” limitation was justified in those cases. They merely indicate that, for whatever reason, the parties determined that for those particular cases it would be acceptable to have such a limitation. Yahoo does not agree to such a limitation, so these stipulated protective orders provide no guidance. If simply identifying prior stipulated protective orders that did not include an “outside counsel only” limitation were persuasive, Yahoo could provide the Court with hundreds, but there would be no pointbecause this situation is not analogous Second, in GT, Inc., the appellate court affirmed a protective order limiting production of certain financial information to “counsel only.” See GT, Inc., 151 Cal. App. 3d at 755. The opinion makes no distinction between in house counsel or outside counsel. From the context of PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER the opinion, it appears that the party seeking disclosure did not have in house counsel. This distinction is significant. Had the party employed in house counsel who did not have a primarily business role and who was responsible for managing the company’s litigation, the analysis and likely the ultimate result would have been different. Thus, the decision is inapplicable. But even if it wereapp licable, theopinion was still primarily about the issue of punitive damages, and as theappellate court explained: A protective order is easy to justify where financial information is needed for punitive damages, because the client has little need to know the information when preparing his case on the liability question. However, where the financial information goes to the heart of the cause of action itself, a litigant should not be denied access so easily . at 754 (emphasis added). Here, the Google Agreement and related documents go to the heartof Yahoo’s claims, and Yahoo is not seeking to disclose such documents to everyone at the company. Yahoo is merely requesting that its in house counsel who are involved with the management of thislitigation be allowed access, to enable Yahoo to properly analyze and prosecute its case and defend against Mozilla’s counterclaims. An “outside counsel only” limitation is not warranted here. Mozilla’s Alleged Harm is Unsupported by Evidence and Directly Contradicted by Its Prior Position Taken in This Case. Mozilla provides zeroevidence of the alleged harm it would suffer if a limited number of Yahoo in house lawyersall of whom would be bound by this Court’s protective order and their ethical duties as attorneyswere able to see the Google Agreement and related emails and other documents. The lack of any declaration from someone at Mozilla explaining specifically how this limited disclosure would harm Mozilla is a fatal flaw in Mozilla’s Motion. Mozilla has wholly failed to provide evidence sufficient to establish good cause for its “outside counsel only” limitation, as required under Cal. Civ. Proc. Code § 2031.060.To the extent Mozilla tries to remedy this fatal flaw by submitting a declaration in connection with its reply brief, doing so would be improper and prejudicial, and the declaration should be excluded. SeeJay v. Mahaffey 218 Cal. App. 4th 1522, 1537 (2013) (affirming exclusion of declarations submitted for first time PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER on reply, and explaining that “The general rule of motion practice, which applies here, is that new evidence is not permitted with reply papers.”) Even though unsupported by any evidence, Mozilla offers the conclusion that it “faces a significant risk of harm if Yahooinsiders get access to the pricing and other business terms of its deal with other search providers.” Motion, 8:12 13. But this argument is directly contradicted by statements made by Mozilla in opposition to Yahoo’s motion to seal its complaint. There, Yahoo sought to seal the Strategic Agreement from public view to limit its exposure to business focused employees of its competitors and other business partners. Mozilla opposed Yahoo’s motion to seal and submitted a declaration of Denelle Dixon, its Chief Business and Legal Officer, stating the following: Mozilla has no interest in maintaining the confidentiality of the terms of the Strategic Agreement. If the terms of the Strategic Agreement were made public, Mozilla would not suffer any significant competitive disadvantage, especially as the terms of the agreement were negotiated over three years ago with a company that no longer exists as an independent entity. Zimmermann Decl.,¶ 6, Ex. 3(emphasis added). Mozilla’s admission that the disclosure of the Strategic Agreement to the public at large would not cause “any significant competitive disadvantage” cannot be reconciled with its current position that the mere disclosure of the Google Agreement to a select few in house counsel responsible for this litigation would cause it significant harm. That the Strategic Agreement was negotiated a few years ago is immaterial because the terms of the agreement were active less than six months ago, and they would have remained active until at least December 2019. And the fact that Yahoo’s operating business since has been acquired by Verizon is irrelevantthe agreement had no less significance or efficacy as a result of the acquisition. Mozilla’s unsupported and conclusory claims of “competitive harm” ring hollow. Its argument is belied by its prior position taken in this case, and it has wholly failed to establish the good cause required to justify a disfavored “outside counsel only” limitation. Mozilla’s Motion should be denied on this ground alone. PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER The Prejudice to Yahoo would be Substantial. In contrast to the lack of harm to Mozilla, Yahoo faces substantial prejudice if its in house counsel who are involved with the management of this litigation are unable to access highly relevant documents regarding key issuesThe Google Agreement, and any emails or other documents relating to the negotiation of or decision to enter into the Google Agreement, are likely the primary source of evidence of Mozilla’s true intent behind terminating the Strategic Agreement. As Mozilla’s true intent in terminating is a case dispositive issue, Mozilla should not be permitted to shield this evidence from Yahoo’s in house counsel. Access to such information is necessary to evaluate the viability of Yahoo’s claims and determine its strategic approach to the prosecution of this case. Without such access, Yahoo would be forced to rely solely on the perceptions of its outside counsel, without any ability to evaluate the evidence for itself or provide any input or context that could help shape the decision making process. Given the complexity of the Strategic Agreement, and the likely complexity of the Google Agreement, input and guidance from Yahoo’s in house counsel is crucial. If the Court has concerns regarding the number of in house lawyers who would have accessYahoo is willing to limit that number to one lawyer. Mozilla flippantly suggests that any harm to Yahoo based on this “outside counsel only” designation can be remedied, because “Should Yahoo’s counsel believe that the designations are improper, the proposed protective order provides a mechanism for de designation of documents.” Motion, 8:23 34. But this does not allay Yahoo’s concerns. First, given that Mozilla has already taken the position that the Google Agreementand any related documents are irrelevant, and that the disclosure of any such documents, even to a select few Yahoo in house lawyers, would cause it substantial harm, it is highly unlikely that Mozilla would agree to de designate any such documents upon Yahoo’s request. And once Yahoo’s request is denied, Yahoo’s outside counsel would be forced to decide whether to bear the burden and expense of filing a motion to compel, just so that they could show a particular document to their client. Moreover, forcing Yahoo’s counsel to request Mozilla’s permission to de designate documents that it would like to share with its client would be an unwarranted intrusion on Yahoo’s litigation strategy. This would effectively serve as a running dialogue between Yahoo’s counsel PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER and Mozilla’s counsel, where Yahoo’s counsel would be forced to repeatedly notify Mozilla’s counsel of the documents it identifies and deems significant enough to warrant a request for sclosure to its client. Such an inefficient and prejudicial intrusion is unjustified here. Mozilla Should Not be Permitted to Unilaterally Redact Information from Relevant Documents. espite failing to justify limiting the disclosure of the Google Agreement and related documents to Yahoo’s outside counsel, Mozilla goes one step further and states that it will also redact certain information that it unilaterally deems irrelevant from otherwise relevant and responsive documents so that not even Yahoo’s outside counsel can see those portions of relevant documents. This should not be permitted. California Civ. Proc. Code § 2031.010 contemplates the production of “documents,” not portions of documents or certain paragraphs or sentences of documents that the producing party deems relevant. California Civ. Proc. Code § 2 requires that documents be produced “as they are kept in the usual course of business, or be organized and labeled to correspond with the categories in the demand.” (emphasis added). Nowhere does the California Civil Procedure Code or the case lawpermit the unilateral redaction of information from relevant documents because the producing party deems those portions irrelevant. And, Mozilla cites no authority for doing so. Redaction is permitted in very limited circumstances to protect against disclosure of attorney client privilege or work product, or sometimes to protect personally identifying information of third party individuals, such as names, birth dates, and Social Security numbers. See, e.g.Lopez v. Watchtower Bible & Tract Soc'y of New York, Inc., 246 Cal. App. 4th 566, 598 (2016) (permitting redaction of names, birth dates, and Social Security numbers to protect privacy interests of third party individuals); Garcia v. Superior Court, 42 Cal. 4th 63, 73 (2007) (ordering the redaction of “privileged material”). Redaction based on unilateral “relevance” determinations has been routinely rejected by numerous courts around the country. See, e.g., HR Tech., Inc. v. Imura Int’l U.S.A., Inc., No. 08JWL, 2011 WL 836734, at *1 (D. Kan. Mar . 4, 2011) (affirming prior rejection of “plaintiff's argument that it could redact non responsive portions of otherwise responsive documents” and affirming order requiring plaintiff to “produce any redacted PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER documents in their entirety”); Bartholomew v. Avalon Capital Group, Inc., 278 F.R.D. 441, 451 52 (D. Minn. 2011) (“It is rare that a document contains only relevant information. . . . Fed.R.Civ.P. 34 concerns the discovery of ‘documents’; it does not concern the discovery of individual pictures, graphics, paragraphs, sentences, words within those documents.”); Archelormittal Cleveland Inc. v. Jewell Coke co., L.P., No. 1:10 00362, 2010 WL 5230862, at *3 (N.D. Ohio Dec. 16, 2010) (“[T]he language of Rule 34 discusses production of ‘documents,’ rather than pages or sentences.”); Upton v. McKerrow, No. 1:94 353MHS, 1996, WL 193807, *5 (N.D. Ga. Feb. 20, 1996) (granting plaintiff’s motion to compel, requiring defendant to produce unredacted copies of responsive documents)Orion Powers Midwest, L.P. v. Am. Coal Sales Co. No. 2:05 555, 2008 WL 4462301, at *2 (W.D. Pa. Sept. 30, 2008) (holding that redaction is not allowed). Mozilla tries to assuage Yahoo’s concerns by stating that “Mozilla commits to working with Yahoo in explaining the nature of the redactions to assure Yahoo that redacted information is not necessary to try this case.” Motion, 8:6 7. But this is a fruitless gesture for two reasons. First, the standard for discovery is not whether the information is “necessary to try this case.” Yahoo is entitled to any information that “appears reasonably calculated to lead to the discovery of admissible evidence.” Cal. Civ. Proc. Code § 2017.010. Second, Mozilla cannot be empowered to unilaterally determine what it deems “relevant” to this dispute, as the parties disagree as to what is relevant. After explaining Yahoo’s position that the Google Agreement andrelated documents are central to this case, Mozilla states, “Mozilla disagrees that these documents are relevant.” Motion, 3:24. Mozilla goes on, “Mozilla’s motivation in exercising its rights under the Strategic Agreement simply does not matter.” Motion, 4:2 3. This could not be more incorrect. Whether Mozilla had an objectively reasonable or good faith belief in exercising its rightsunder the Change of Control provision and terminating the Strategic Agreement is a case dispositive issue. The Google Agreement, and any emails relating to the negotiation of or decision to enter into it, are likely the primary source of evidence of Mozilla’s true motivation for doing so. That Mozilla claims these documents are irrelevant is confusing at best, and a calculated attempt to shield crucial and damaging evidence from being PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER disclosed at worst. Either way, Yahoo has a right to access these documents in their entirety, and it should not be forced to rely on partially redacted versions of potentially case dispositive evidence. Moreover, Yahoo takes issue with the rationale behind Mozilla’s purported need to redact these documents. Mozilla states, “It is simply a fact that Yahoo’s outside counsel in this case, including long time counsel Dennis Wilson [], will not be able to unsee the information they see in these documents.” Motion, 8:1 3. What Mozilla is implying is that because Mr. Wilson has represented Yahoo in other litigation matters, Mr. Wilson cannot be trusted not to violate this Court’s protective order and his ethical obligations as an officer of the Court by disclosing information about the Google Agreement to his client. This is insulting. Mr. Wilson has every intention of abiding by this Court’s protective order and maintaining his status as a member in ood standing of the California Bar for more than 25 years.Wilson Decl., ¶ Mozilla’s indirect accusations are offensive and unprofessional. There is no legitimate reason to justify redacting these highly relevant documents from Yahoo’s outside counsel. Mozilla tries to put off review of this issue by the Court, claiming that “it is not ripe for adjudication.” Motion, 7:26.Yahoo disagrees. Mozilla has already announced its intention to apply redactions, and it has even specified the type of documents it intends to redact and the purported reasons for doing so. As explained above, there is no basis on which Mozilla shouldbe permitted to redact what it unilaterally determines is irrelevant to this dispute. Yahoo respectfully requests that this Court issue an order stating this. Otherwise, Mozilla will proceed with producing its redacted documents, and the parties will beback before the Court on a motion to compel several months later. Mozilla has already delayed producing these crucial documents for four months. Yahoo would like to avoid any further delays. Yahoo’s Proposed Protective Order Should be Adopted. hile theprimary difference between the parties’ proposed protective orders is Mozilla’s unjustified addition of an “outside counsel only” limitation, the remaining differences should also be resolved in Yahoo’s favor. In particular, Paragraph 13 of Mozilla’s proposed protective order would require anyone, including in house counsel and the parties’ other employees, who accesses PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER any information designated Confidential or Highly ConfidentialAttorneys’ Eyes Only to sign the separate Confidentiality Agreement attached to the protective order, except for outside counsel of record and the Court and its employees. But requiring anyone that accesses any designated documentswhich will likely include nearly every document producedto personally sign the separate Confident iality Agreement is unnecessary. As is standard practice, Yahoo’s proposed protective order limits this extra burden only to outside consultants/experts, employees of third party service bureaus, and witnesses to whom disclosure is reasonably necessary. house counsel and the parties’ other employees are bound by the Court’s protective order by virtue of the fact that their respective companies are parties to this case, so there is no need to execute and maintain a separate Confidentiality Agreement from each of them. The remaining difference between the parties’ proposed protective orders is that Yahoo would limit the disclosure of designated information to people “to whom disclosure is reasonably necessary for this litigation,” while Mozilla would limit it to people “actively working on the litigation with responsibility for the preparation and trial of the action.” It is unclear what, if any, difference Mozilla’s proposed limitation would make. But to the extent there is any significant difference, Yahoo’s proposed language should be used, as there are reasons to access designated information beyond merely preparing for trialsuch as evaluating key evidence for the purpose of assessing potential settlement. Yahoo’s proposed limitation provides adequate protection by limiting disclosure to those people to whom it is reasonably necessary for this litigation. Accordingly, Yahoo respectfully requests that the Court adopt its proposed protective order. PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER IV. CONCLUSION For the foregoing reasons, Yahoo respectfully requests that the Court deny Mozilla’s Motion and adopt Yahoo’s proposed protective order. Yahoo further requests that the Court issue an order stating that Mozilla cannot unilaterally redact information that it deems irrelevant from otherwise relevant and responsive documents. DATED: May 2, 2018 Respectfully submitted, KILPATRICK TOWNSEND & STOCKTON LLP By: DENNIS L. WILSON KOLLIN J. ZIMMERMANN Attorneys for Plaintiffs/Cross Defendants YAHOO HOLDINGS, INC., OATH (EMEA) LTD, and YAHOO! SINGAPORE DIGITAL MARKETING PTE. LTD. PLAINTIFFS’ MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOZILLA CORPORATION’S MOTION FOR PROTECTIVE ORDER PROOF OF SERVICE Yahoo Holdings, Inc., et al. v. Mozilla Corporation Santa Clara Superior Court Case No. 17 319921 I, the undersigned, state that I am and was at all times herein mentioned a resident of the County of Los Angeles, over the age of eighteen (18) years and not a party to the within action or proceeding. My business address is 9720 Wilshire Boulevard, Penthouse Suite, Beverly Hills, California 90212 and I am employed in the offices of Kilpatrick Townsend & Stockton LLP by a member of the Bar of this Court at whose direction the service mentioned herein below was made. On May 2 I served the following document(s): PLAINTIFFS/CROSS DEFENDANTS YAHOO HOLDINGS, INC., OATH (EMEA) LTD., AND YAHOO! SINGAPORE DIGITAL MARKETING PTE. LTD.’S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOZILLA CORPORATION'S MOTION FOR PROTECTIVE ORDER upon the interested parties in this action by placing the copy thereof in an envelope addressed as follows: Gregory D. Call Emily T. Kuwahara Kristin J. Madigan CROWELL & MORING LLP CROWELL & MORING LLP 515 S. Flower St., 40 Floor 3 Embarcadero Center, 26 Floor Los Angeles, CA 90071 San Francisco, CA 94111 Tel: (213) 622.4750 Tel: (415) 986 Fax: (213) 622 Fax: (415) 986 Email: ekuwahara@crowell.com Email: gcall@crowell.com kmadigan@crowell.com [X] (BY OVERNIGHT DELIVERY) I am readily familiar with the practice of Kilpatrick Townsend & Stockton, LLP for collection and processing of documents for overnight delivery and know that the document(s) described herein will be deposited in a box or other facility regularly maintained by Federal Express, UPS, DHL or the like, or by Express Mail via the United States Postal Service. I declare under penalty of perjury under the laws of the State of California that the above is true and correct. Executed onMay 2 , 2018, at Beverly Hills, California. PROOF OF SERVICE