Unreported / Non-Citable
Background
Plaintiffs Spyder Games LLC and others moved to compel Defendant Mementum Lab to produce documents from Mementum’s third-party licensors (“Licensors”) and to make the Licensors available for deposition. Plaintiffs also sought an exclusion order precluding Mementum from relying on any Licensor documents or testimony not produced.
The dispute centered on whether Mementum had “control” over the Licensors’ documents under Federal Rule of Civil Procedure 34 and Ninth Circuit precedent, and whether Mementum could be compelled to produce the Licensors for deposition under Rule 30(b)(6). The Court reviewed the licensing agreement between Mementum and its Licensors (filed under seal at Dkt. 64-1) and the parties’ joint submission at Dkt. 62.
The Court’s Holding
The Court granted in part and denied in part Plaintiffs’ requests. It held that Mementum has control over the Licensors’ documents because the Agreement contains an express contractual obligation requiring Licensors to cooperate in enforcement litigation, including providing evidence and documents upon demand.
Accordingly, the Court ordered Mementum to produce responsive Licensor documents by November 30, 2026. However, the Court denied the request to compel depositions of the Licensors, finding that the Licensors are independent contractors and do not fall within the scope of Rule 30(b)(6) as officers, directors, managing agents, or other designees of Mementum. The request for an exclusion order was denied as premature, without prejudice to renewal should additional facts warrant.
Key Takeaways
- A contractual right to obtain documents from a third party upon demand establishes ‘control’ under Rule 34 and Ninth Circuit precedent (In re Citric Acid Litig.).
- The licensing agreement’s Article 14.1 and Article 8, requiring Licensors to cooperate in enforcement litigation and provide evidence, created Mementum’s legal right to obtain responsive documents.
- Control over documents does not equate to control over third-party witnesses for deposition purposes; Rule 30(b)(6) applies only to a party’s own officers, directors, managing agents, or designees.
- The Licensors’ status as independent contractors under the Agreement precluded compelling their depositions through Mementum absent a showing they are managing agents.
- An exclusion order barring reliance on non-produced third-party materials is premature absent evidence the party intends to use such materials at trial.
Why It Matters
This order clarifies the distinction between document control and witness control in the Ninth Circuit. It reinforces that express contractual cooperation clauses in licensing agreements can establish a party’s obligation to produce third-party documents under Rule 34, even where the third parties are independent contractors.
However, it confirms that such contractual leverage does not extend to compelling third-party depositions under Rule 30(b)(6) absent an agency or employment relationship. The ruling provides practical guidance for litigants seeking discovery from non-party licensors in intellectual property enforcement actions.
The order is also a practical reminder that litigants must distinguish the immediate ruling from issues left open. Its deadlines and procedural directions apply to this case, while the court’s stated reasoning identifies the legal framework counsel should address in comparable matters. Lawyers should preserve the factual record relevant to that framework, comply precisely with any stated deadline, and avoid treating an interim procedural ruling as a final merits judgment. Those distinctions can determine both the next filing and whether later review is available.