1 O 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 Case No.: 2:20-cv-02907-MEMF(JEMx) 11 EVOX PRODUCTIONS LLC,

12 Plaintiff, ORDER ON MOTIONS IN LIMINE [ECF

NOS. 164, 165, 166, 169, 170, 171, 172, 173,

13 v. 174, 178, 180, 181, 182, 186] 14 15 YAHOO INC., Defendant. 16 17

18 19 Before the Court are four (4) motions in limine filed by Plaintiff Evox Inc. (ECF Nos. 164, 20 165, 166, 186) and ten (10) motions in limine filed by Defendant Yahoo Inc. (ECF Nos. 169, 170, 21 171, 172, 173, 174, 178, 180, 181, 182). For the reasons stated herein, the Court GRANTS IN PART 22 and DENIES IN PART the motions as described below. 23 24 I. Background 25 A. Factual Background 26 This action stems from a dispute over a licensing agreement for automobile photographs. 27 Plaintiff Evox Productions, LLC (“Evox”) contracted with Defendants AOL, Inc. (“AOL”), Oath, 28 Inc. (“Oath”), and Verizon Media, Inc. (“Verizon”) (collectively, the “AOL Defendants”) to allow 1 AOL to use automobile photographs owned by Evox on AOL’s “Autoblog” website. Evox alleges 2 that AOL made unauthorized use of some of those images after the expiration of the license and 3 infringed Evox’s copyright. See ECF 87. Following corporate changes, the parties stipulated to 4 substitute the AOL Defendants for Defendant Yahoo, Inc. (“Yahoo”). See ECF No. 161. 5 B. Procedural History 6 Evox initially filed suit on March 27, 2020. ECF No. 1. After a series of motions, Evox filed 7 a Third Amended Complaint on July 9, 2023. ECF No. 87. The Third Amended Complaint alleges 8 only one cause of action: copyright infringement. See id. ¶¶ 87–95. Yahoo asserts 25 affirmative 9 defenses. See ECF No. 120. On July 10, 2023, the Court issued an order on the parties’ respective 10 motions for summary judgment. ECF No. 235. 11 On May 25, 2023, pursuant to stipulation, the Court substituted Yahoo for the AOL 12 Defendants. ECF No. 163. The Court dismissed the action with prejudice as to the AOL Defendants, 13 and amended the Third Amended Complaint and case caption to substitute Yahoo in their place. See 14 id. 15 Evox and Yahoo filed their Motions in Limine on June 7, 2023. See ECF Nos. 164, 165, 166, 16 169, 170, 171, 172, 173, 174, 178, 180, 181, 182, 186. Evox and Yahoo both filed oppositions to all 17 of the others’ Motions in Limine on June 21, 2023. See ECF Nos. 188, 189, 190, 191, 192, 193, 194, 18 195, 196, 197, 205, 206, 207, 213. Yahoo filed a supplemental declaration on July 7, 2023. ECF No. 19 230. 20 II. Applicable Law 21 A. Motions in Limine 22 A motion in limine is “a procedural mechanism to limit in advance testimony or evidence in 23 a particular area.” United States v. Heller, 551 F.3d 1108, 1111 (9th Cir. 2009). A party files a 24 motion in limine to exclude anticipated prejudicial evidence before the evidence is introduced at 25 trial. See Luce v. United States, 469 U.S. 38, 40 n.2 (1984). A court has the power to grant such 26 motions pursuant to its “inherent authority to manage trials,” even though such rulings are not 27 explicitly authorized by the Federal Rules of Evidence. Id. at 41 n.4 (citation omitted). Regardless of 28 a court’s initial decision on a motion in limine, it may revisit the issue at trial. Id. at 41–42 (“[E]ven 1 if nothing unexpected happens at trial, the district judge is free, in the exercise of sound judicial 2 discretion, to alter a previous in limine ruling.”). 3 B. Federal Rule of Civil Procedure 26 4 Under Federal Rule of Civil Procedure 26(a)(2), a party is required to disclose an expert 5 witness and submit an accompanying report prepared by the witness. Fed. R. Civ. P. 26(a)(2)(A)– 6 (B). This written report must contain, in part: (1) a complete statement of all opinions expressed by 7 the witness and the “basis and reasons for them”; (2) the facts and data used by the witness in 8 forming his or her opinions; and (3) the exhibits that will be used to support or summarize the 9 opinions. Fed. R. Civ. P. 26(a)(2)(B)(i)–(iii). 10 C. Federal Rule of Evidence 702 11 The personal knowledge requirement for lay witnesses does not apply to expert testimony. 12 Fed. R. Evid. 602. Federal Rule of Evidence 702 allows a witness to testify as an expert “[i]f 13 scientific, technical, or other specialized knowledge will assist the trier of fact to understand the 14 evidence or to determine a fact in issue.” United States v. Alonso, 48 F.3d 1536, 1540 (9th Cir. 1995) 15 (quoting Fed. R. Evid. 702). While Courts may reject wholly speculative or unfounded testimony, it 16 abuses its discretion if it overlooks relevant data submitted as the foundation of an expert's remarks.” 17 Elosu v. Middlefork Ranch Inc., 26 F.4th 1017, 1025 (9th Cir. 2022). Experts may express opinions 18 without published support if they provide an explanation of why such publications are unavailable. 19 Primiano v. Cook, 598 F.3d 558, 567 (9th Cir. 2010). This concern regarding speculation speaks to 20 weight, not reliability. Elosu, 26 F.4th at 1025. 21 D. Federal Rules of Evidence 401 and 402 22 Federal Rule of Evidence 402 (“Rule 402”) explicitly prohibits the inclusion of “irrelevant” 23 evidence. Fed. R. Evid. 402. The Rule dictates that “[r]elevant evidence is admissible unless any of 24 the following provides other: the United States Constitution; a federal statute; these rules; or other 25 rules prescribed by the Supreme Court. Irrelevant evidence is not admissible.” Fed. R. Evid. 402. 26 Federal Rule of Evidence 401 prescribes what evidence qualifies as relevant. Fed. R. Evid. 401. It 27 provides that evidence is relevant if: “(a) it has any tendency to make a fact more or less probable 28 than it would be without the evidence; and (b) the fact is of consequence in determining the action.” 1 Id. 401(a)–(b); see also Crawford v. City of Bakersfield, 944 F.3d 1070, 1077 (9th Cir. 2019) 2 (“Deciding whether a fact is of consequence in determining the action generally requires considering 3 the substantive issues the case presents.” (internal quotation marks omitted)). Courts have 4 recognized that Rule 401’s “basic standard of relevance . . . is a liberal one.” Crawford, 944 F.3d at 5 1077. 6 E. Federal Rule of Evidence 403 7 Federal Rule of Evidence 403 (“Rule 403”) dictates that “[t]he court may exclude relevant 8 evidence if its probative value is substantially outweighed by a danger of one or more of the 9 following: unfair prejudice, confusing the issues, misleading the jury, undue delay, wasting time, or 10 needlessly presenting cumulative evidence.” Fed. R. Evid. 403. District courts have broad discretion 11 in assessing admissibility under Rule 403. Sprint/United Mgmt. Co. v. Mendelsohn, 552 US 379, 384 12 (2008) (finding “wide discretion” necessary because Rule 403 “requires an on-the-spot balancing of 13 probative value and prejudice, potentially to exclude . . . evidence that already has been found to be 14 factually relevant”) (internal quotes omitted); see also Hardeman v. Monsanto Co., 997 F.3d 941, 15 967 (9th Cir. 2021), cert. denied, 142 S. Ct. 2834 (2022) (“A district court’s Rule 403 determination 16 is subject to great deference, because the considerations arising under Rule 403 are susceptible only 17 to case-by-case determinations, requiring examination of the surrounding facts, circumstances, and 18 issues.”). 19 III. Discussion 20 Evox moves to exclude at trial: (1) evidence and argument related to Evox’s prior copyright 21 enforcement actions (ECF No. 164); (2) evidence and argument related to any alleged breach of 22 contract by Evox (ECF No. 165); (3) evidence and argument related to any alleged breach of 23 Autoblog’s terms of service by Evox; and (4) evidence and argument suggesting Evox failed to 24 mitigate damages (ECF No. 186). 25 Yahoo moves to exclude at trial: (1) evidence and argument related to the parties’ discovery 26 disputes (ECF No. 169); (2) evidence and argument related to Yahoo’s sophistication and net worth 27 (ECF No. 170); (3) evidence and argument related to infringement or other potential misconduct by 28 third parties (ECF No. 171); (4) evidence and argument related to abandoned liability theories (ECF 1 No. 172); (5) evidence and argument related to communications between counsel (ECF No. 173); (6) 2 evidence and argument related to the “making available” theory of infringement (ECF No. 174); (7) 3 evidence and argument regarding Michael Del Monte’s 2017 and 2022 Reports (ECF No. 178); (8) 4 expert testimony from Jonathan Hochman (ECF No. 180); (9) expert testimony from Jeffrey Sedlik 5 (ECF No. 181); and (10) Expert Testimony from Michael Del Monte (ECF No. 182). 6 A. Evox’s Prior Copyright Enforcement Actions (Evox’s Motion in Limine No. 1, ECF 7 No. 164) 8 Evox argues that Yahoo intends to suggest that Evox is a “copyright troll” as its primary 9 business, and seeks to exclude any such argument, as well any references to Evox’s past copyright 10 enforcement actions and revenue from prior settlements. See ECF No. 164 at 2. Evox argues such 11 evidence or argument is irrelevant under Rule 402 and unduly prejudicial under Rule 403. Evox 12 points to nonbinding authority where such evidence was excluded. See Unicolors, Inc. v. Urb. 13 Outfitters, Inc., 686 F. App'x 422, 425 (9th Cir. 2017) (unpublished case holding that “Evidence of 14 prior [copyright infringement] lawsuits should be excluded when the possible prejudice to a party 15 outweighs any probative value . . . The district court was well within its discretion to exclude it.”). 16 Novelty Textile Inc. v. Wet Seal Inc., 2014 WL 12603499, at *4 (C.D. Cal. Oct. 22, 2014); Fabric 17 Selection, Inc. v. NNW Imp., Inc., 2018 WL 1779334, at *2 (C.D. Cal. Apr. 11, 2018). 18 Yahoo counters that it does not intend to call Evox a “copyright troll” and instead intends 19 only to present “limited evidence and argument about Evox’s litigation-based business model” to 20 show that Evox “at most deserves the lower end of the Copyright Act’s statutory damages range.” 21 ECF No. 25 at 1. Yahoo argues such evidence sheds light on the value of Evox’s copyrights and is 22 relevant. See id. Yahoo also intends to cross examine certain Evox witnesses on their roles at Evox, 23 which will necessarily require evidence on Evox’s business model, and which is relevant to the 24 witnesses’ credibility. See id. at 8. Finally, Yahoo argues that this information is relevant to certain 25 affirmative defenses, particularly to the extent it might explain Evox’s purported delay in bringing 26 suit. See id. 27 28 1 Upon consideration of the parties’ moving briefs, the Court finds that the testimony and 2 evidence at issue is irrelevant and unduly prejudicial. Accordingly, Evox’s Motion in Limine No. 1 3 is GRANTED. 1 4 B. Evox’s Alleged Breach of Contract (Evox’s Motion in Limine No. 2, ECF No. 165) 5 Evox seeks to preclude Yahoo from arguing that Evox breached the license agreement. ECF 6 No. 165. Evox notes that it is not affirmatively asserting a claim for breach of contract, and that 7 Defendants have not asserted any affirmative defense on this basis, and thus argues any discussion of 8 alleged breaches would only be prejudicial. See id. at 3. Evox points to Rules 402 (relevance) and 9 403 (prejudice), and notes that Yahoo made such arguments in its Motion for Summary Judgment. 10 See id. at 3–5. 11 Yahoo focuses its response on the license agreement’s “Duty to Inform” provision, which 12 Yahoo alleges that Evox violated by failing to promptly inform AOL of alleged violations. See ECF 13 No. 206; ECF No. 87-4, Exhibit D to Third Amended Complaint (“License Agreement”), at 10.2 14 Yahoo concedes that this is “irrelevant to whether [Evox] can establish a prima facie case of 15 copyright infringement,” but argues that it is relevant to affirmative defenses and damages. See id. at 16 5. Yahoo points specifically to its affirmative defenses regarding implied license, unclean hands, and 17 estoppel. See id. at 6–7. 18 19 20 / / / 21 / / / 22 / / / 23

24 1 As discussed at the hearing, a valid area of cross-examination for bias is the number of times that a retained 25 expert has been hired by a given party. Yahoo will be permitted to cross-examine Evox’s expert witnesses on this for this limited purpose. The Court notes that at the hearing, counsel for Evox suggested that it planned to 26 present evidence disproving the idea that Evox has a litigation-based business model. This is precluded given the Court’s ruling that Evox’s business model is irrelevant. Just as Yahoo is prohibited from presenting 27 evidence or argument on this topic, Evox is, too. 2 The License Agreement attached to the Third Amended Complaint does not appear to be internally 28 1 As a preliminary matter, this Court must resolve the dispute between the parties as to the 2 meaning of the “Duty to Inform” provision. See ECF No. 165 at 2-3; ECF No. 206 at 3-5. The 3 provision reads as follows:

4 Duty to Inform. Both Parties shall promptly inform the other Party of any information 5 related to the Images which could reasonably lead to a claim, demand or liability of or against either Party and/or its Affiliates by any third party. 6 License Agreement at 10. Evox argues that the last phrase should be read as follows: 7 a claim, demand or liability OF either Party and/or its Affiliates by any third party 8 OR 9 a claim, demand or liability AGAINST either Party and/or its Affiliates by any third party 10 In contrast, Yahoo argues that the last phrase should be read as follows: 11 a claim, demand or liability OF either Party and/or its Affiliates 12 OR a claim, demand or liability AGAINST either Party and/or its Affiliates by any third 13 party 14 The plain language of the provision is unambiguous, and only permits one reading—that advanced 15 by Evox. As illustrated above, Yahoo’s reading requires reading the provision contrary to the rules 16 of grammar. According to Yahoo, the phrase “by any third party” only modifies “Party and/or its 17 Affiliates” when preceded by “against,” but not when preceded by “of.” This is untenable. The Duty 18 to Inform provision only applies to claims, demands, and liability involving third parties, and does 19 not place upon Evox a duty to promptly inform Yahoo of Evox’s potential claims against Yahoo for 20 copyright infringement by Yahoo of Evox’s copyrights. Accordingly, the Duty to Inform provision 21 is not relevant to any claim or defense. 22 For these reasons, Evox’s Motion in Limine No. 2 is GRANTED. Yahoo may not present 23 evidence of the purported breach of contract for any purpose. 24 C. Evox’s Alleges Breaches of Autoblog’s Terms of Service (Evox’s Motion in Limine 25 No. 3, ECF No. 166). 26 Evox argues that Yahoo should be prohibited from arguing that Evox’s investigation of 27 alleged infringement—which relied on automated processes known as “scraping” or “crawling”— 28 was a breach of the Autoblog Terms of Service. See ECF No. 166. Evox points to Rules 402 1 (relevance) and 403 (prejudice), and notes (as above) that Yahoo made these arguments in its Motion 2 for Summary Judgment. See id. at 2. Evox also argues that evidence regarding the Terms of Service 3 is incomplete, out of context, unauthenticated, hearsay, and fails to comply with the best evidence 4 rule. See id. at 3–4. The evidence is a quote from the terms of service contained in an email by an 5 Evox executive. See id.; see also ECF No. 207. 6 Yahoo argues that this evidence is relevant to Yahoo’s unclean hands affirmative defense, as 7 it purportedly suggests a knowing violation by Evox. See ECF No. 207 at 1. Yahoo also explains that 8 it does not intend to introduce the email in question for its truth, and rather intends to show Evox’s 9 “awareness,” and that in any case it is not hearsay because it is an opposing party statement. See id. 10 at 5. Yahoo also intends to introduce the complete Terms of Service, which Yahoo argues renders 11 the best evidence and completeness objections inapposite. See id. at 6. 12 Unclean hands applies where “plaintiff's conduct is inequitable and that the conduct relates to 13 the subject matter of its claims.” Brother Recs., Inc. v. Jardine, 318 F.3d 900, 909 (9th Cir. 2003) 14 (overruled on other grounds by Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1183 (9th 15 Cir. 2010). “The defense of unclean hands by virtue of copyright misuse prevents the copyright 16 owner from asserting infringement and asking for damages when the infringement occurred by his 17 dereliction of duty.” Supermarket of Homes, Inc. v. San Fernando Valley Bd. of Realtors, 786 F.2d 18 1400, 1408 (9th Cir. 1986). “Plaintiff's action will be dismissed under the theory of unclean hands if 19 defendant establishes that plaintiff's evidence was false and that plaintiff was involved in a scheme 20 to defraud the public.” Id. The facts of Supermarket have little application to the purported breach of 21 terms of service. See id. The Fourth Circuit has applied this doctrine to bar copyright claims where 22 the defendant requested aid in avoiding infringement, the plaintiff had a duty to respond under a 23 consent decree, and nevertheless did not respond. Tempo Music, Inc. v. Myers, 407 F.2d 503, 507 24 (4th Cir. 1969). 25 The Court is aware of no binding authority that extends unclean hands to this sort of conduct 26 in the copyright context. A purported breach of Autoblog’s terms of service is far afield from the key 27 issues in this case. To the extent that testimony on this issue has any relevance at all, the Court finds 28 1 that this relevance is significantly outweighed by potential for undue prejudice. Accordingly, Evox’s 2 Motion in Limine No. 3 is GRANTED. 3 D. Mitigation of Damages (Evox’s Motion in Limine No. 4, ECF No. 186) 4 Evox seeks to preclude Yahoo from arguing that Evox failed to take reasonable steps to 5 mitigate damages. See ECF No. 186. Evox points to district court cases holding that mitigation of 6 damages is not a defense to copyright infringement. See Interscope Recs. v. Time Warner, Inc., 2010 7 WL 11505708, at *1 (C.D. Cal. June 28, 2010); Michael Grecco Prods., Inc. v. Livingly Media, Inc., 8 2021 WL 2546749, at *14 (C.D. Cal. Apr. 16, 2021). Evox also notes that the United States Supreme 9 Court has considered whether laches (but not mitigation) is a defense to copyright infringement, and 10 held that a copyright owner is entitled to “defer suit” if he or she would like, and that the three-year 11 statute of limitations is a sufficient limit on damages for this circumstances. Petrella, 572 U.S. at 12 683. Evox argues that its alleged delay was only two and half months, which Evox argues is not 13 sufficiently long to justify allowing this defense. See ECF No. 186 at 5. Finally, Evox argues that 14 this evidence will confuse or mislead the jury. See id. at 5–7. 15 Yahoo argues that this is a procedurally improper “disguised motion for summary judgment” 16 on Yahoo’s failure to mitigate affirmative defense. See ECF No. 213. To the extent that case law 17 prohibits this affirmative defense, Yahoo argues this is a “quintessential summary judgment” issue 18 that Evox failed to timely raise. See id. at 3. Yahoo also argues that this Motion in Limine is 19 overbroad, as the timing of when Evox learned of infringement and notified Yahoo is also relevant 20 to other affirmative defenses, such as implied license. See id. at 4. Finally, Yahoo argues that 21 copyright plaintiffs do in fact have a duty to mitigate damages, and that the probative value of this 22 evidence outweighs other considerations. See id. at 5–11. 23 Upon consideration of the parties’ moving briefs, the Court finds that the testimony and 24 evidence at issue is irrelevant and unduly prejudicial. The Court also notes that the affirmative 25 defense of implied license has largely been foreclosed and the affirmative defense of failure to 26 mitigate damages is improper in a copyright infringement action, as discussed in Evox’s Motion. 27 Importantly, copyright plaintiffs may seek two different forms of damages: (1) statutory 28 damages (a dollar value per work, ranging from $750 to $30,000) or (2) actual damages plus the 1 defendant’s profits. 17 U.S.C. § 504(a)–(c). Here, Evox seeks statutory damages. In setting statutory 2 damages, the finder of fact may consider a broad range of factors, provided damages are set in the 3 range of $750 to $30,000 per work. See F. W. Woolworth Co. v. Contemp. Arts, 344 U.S. 228, 232 4 (1952). The finder of fact should “do justice” within these limits. Id. The Supreme Court has held 5 that in setting non-statutory damages, the trier of fact “may take account of [plaintiff’s] delay in 6 commencing suit.” Petrella, 572 U.S. at 687. Because non-statutory damages are explicitly based on 7 the defendant’s profit, delay is relevant to this category of damages. See id. “[P]laintiff's delay can 8 always be brought to bear at the remedial stage, in determining appropriate injunctive relief, and in 9 assessing the profits of the infringer attributable to the infringement.” Id. at 667 (internal quotations 10 omitted). No binding precedent has extended this to statutory damages of the kind Evox seeks here, 11 which do not involve injunctive relief and are not based on defendant’s profits. Petrella held that a 12 plaintiff’s delay is never a complete defense to suit, but may be considered in setting non-statutory 13 damages, without addressing statutory damages. See Petrella, 572 U.S. at 667. And the Court made 14 clear that “there is nothing untoward about [a copyright plaintiff] waiting” to bring suit. Id. at 682. 15 Given the lack of authority supporting considering this factor, and the potential for prejudice 16 from this evidence, Evox’s Motion in Limine No. 4 is GRANTED. 17 E. Discovery Disputes (Yahoo’s Motion in Limine No. 1, ECF No. 169) 18 Yahoo is concerned that Evox intends to suggest that Yahoo (or its predecessors in interest) 19 failed to comply with discovery obligations, and Yahoo seeks to preclude any argument or evidence 20 along these lines, including reference to discovery disputes and suggestions that a lack of evidence is 21 caused by Yahoo’s wrongdoing. See ECF No. 169. The parties previously litigated over AOL’s 22 “access logs” and page view data. See id. at 2–3; see also ECF Nos. 70-1, 119. AOL produced page 23 view data after it was ordered to do so, but because access logs are typically only preserved for two 24 weeks, AOL did not preserve access logs that significantly predated litigation, and thus did not 25 produce these access logs. See ECF No. 169 at 2–3. Yahoo argues that these issues are fully settled 26 and should not be relitigated in front of the jury. See id. at 5–7. Yahoo also argues that Judge 27 McDermott’s ruling on Evox’s Motion to Compel is hearsay and is unduly prejudicial. See id. at 8. 28 1 Finally, Yahoo expresses concern that references to these issues will require an explanation of 2 discovery (and its intricacies) to the jury. See id. at 9–10. 3 Evox argues that the page view data AOL only produced after the Court granted a motion to 4 compel was “key evidence” that “altered the trajectory of this litigation,” and that the jury should 5 consider AOL’s conduct in discovery in setting damages. See ECF No. 188. Evox cites authority 6 which purportedly suggests that discovery conduct is relevant to damages. See Los Angeles News 7 Serv. v. Reuters Television Int'l, Ltd., 149 F.3d 987, 996 (9th Cir. 1998); Dream Games of Arizona, 8 Inc. v. PC Onsite, 561 F.3d 983, 993 (9th Cir. 2009). 9 Upon consideration of the parties’ moving briefs, the Court finds that the testimony and 10 evidence at issue is irrelevant and unduly prejudicial. Importantly, a review of the precedent Evox 11 cites shows that little to no binding authority supports Evox’s position that conduct in litigation is 12 relevant to damages. Evox first points to page 196 of Los Angeles News, which discusses various 13 considerations a court may consider in setting copyright damages but does not mention conduct in 14 discovery or conduct in litigation. See Los Angeles News, 149 F.3d at 196. Evox next cites Dream 15 Games, which held that “conduct during litigation” may be considered in setting statutory copyright 16 damages. See Dream Games, 561 F.3d at 993. As Evox acknowledges, Dream Games and the cases 17 it cites addressed plaintiff’s, rather than defendant’s conduct in litigation. See id.; see also ECF No. 18 188 at 5. But Dream Games did not actually consider conduct in litigation in setting damages, it only 19 mentioned such conduct to distinguish it from other evidence (of illegal operation) which it held 20 should not be considered. See Dream Games, 561 F.3d at 993–94. And the cases Dream Games cites 21 considered significantly different “conduct during litigation” than what Evox accuses Yahoo (and its 22 predecessors in interest) of here.3 Beyond these cases, the only binding authority Evox cites is the 23

24 3 Dream Games cited two cases from other circuits in support of the notion that conduct in litigation may be 25 considered: Warner Bros. Inc. v. Dae Rim Trading, Inc., 877 F.2d 1120, 1126 (2d Cir.1989), and Bourne Co. v. Hunter Country Club, Inc., 772 F.Supp. 1044, 1052 (N.D.Ill.1990), aff'd 990 F.2d 934, 939 (7th Cir.1993). 26 Warner Bros. considered as part of its damages calculation plaintiff’s “vexatious”, “oppressive,” and “unreasonable” conduct, which included “obtain[ing] a series of ex parte orders which were illegal, erroneous, 27 unauthorized, and unconstitutional” and were not properly disclosed to the court. See Warner Bros, 877 F.2d at 1126; see also Warner Bros. v. Dae Rim Trading, Inc., 677 F. Supp. 740, 772 (S.D.N.Y. 1988). Bourne Co. 28 1 general principle that the jury may consider many factors in setting a copyright damages award. See 2 F. W. Woolworth, 344 U.S. at 232. 3 No binding authority suggests that Defendants’ refusal to produce a document until after 4 losing a motion to compel should be considered in setting damages. To the extent that it might be 5 appropriate to consider this in some circumstances, the Court finds that the potential for prejudice 6 outweighs the probative value here. Accordingly, Yahoo’s Motion in Limine No. 1 is GRANTED. 7 F. Yahoo’s Sophistication and Net Worth (Yahoo’s Motion in Limine No. 2, ECF No. 8 170) 9 Yahoo seeks to exclude any evidence or argument that Yahoo’s status as a sophisticated 10 company should lead to an inference of willfulness. See ECF No. 170. Yahoo points to binding 11 authority holding that willfulness is based on statement of mind and argues that a company’s 12 sophistication or wealth has no bearing on this state of mind. See Erickson Prods., Inc. v. Kast, 921 13 F.3d 822, 933 (9th Cir. 2019) (“A determination of willfulness requires an assessment of a 14 defendant’s state of mind.”); VHT, Inc. v. Zillow Grp., Inc., 918 F.3d 723, 748 (9th Cir. 2019). 15 Yahoo argues any such information would only be prejudicial, and is barred by Rule 403. See ECF 16 No. 170 at 3–4. 17 Evox counters that sophisticated is actually relevant to state of mind. See ECF No. 189. Evox 18 argues that Yahoo misstates Zillow, which rejected what Evox describes as a different argument than 19 the one Evox makes here. See id. at 2. Further, Evox notes that Yahoo has suggested it is an 20 “innocent infringer,” and argues that this makes sophistication relevant, pointing to Second Circuit 21 precedent. See D.C. Comics Inc. v. Mini Gift Shop, 912 F.2d 29, 32 (2d Cir. 1990) (“[t]he level of 22 sophistication of the defendant in business is an entirely proper means of determining whether or not 23 his infringement was innocent.”). Finally, Evox notes that this information is broadly relevant, and 24 that the finder of fact may consider such information in determining damages. See ECF No. 189 at 6. 25

26 considered as part of its damages calculation that plaintiff appeared to have repeatedly violated a consent 27 decree through eight-month delays in responding to inquires on what had been copyrighted. Bourne Co., 772 F.Supp. at 1051. Each of these courses of conduct are significantly different from delaying in producing a 28 1 Upon consideration of the parties’ moving briefs, the Court finds that the testimony and 2 evidence regarding Yahoo’s net worth is irrelevant and unduly prejudicial. As above with the 3 Yahoo’s First Motion in Limine, Evox argues that this evidence is relevant to damages, but cites no 4 binding authority in support. See id. Evox cites only the high-level rule that the jury may consider 5 many factors (See F. W. Woolworth, 344 U.S. at 232), and then points to one district court case 6 where the court considered the defendant’s net worth to determine whether an award crossed the line 7 from “adequate deterrence” to a “windfall.” See Yash Raj Films (USA), Inc. v. Sidhu, No. 8 CVF090233 AWI GSA, 2010 WL 1032792, *9–*10 (E.D. Cal. Mar. 19, 2010). Yash Raj appears to 9 be an outlier in the caselaw, as demonstrated by the numerous cases Yahoo cited. See, e.g., Atari 10 Interactive, Inc. v. Redbubble, Inc., No. 18-CV-03451-JST, 2021 WL 6014734 (N.D. Cal. Oct. 14, 11 2021), aff'd, No. 21-17062, 2023 WL 4704891 (9th Cir. July 24, 2023) (“[Plaintiff] cites no case 12 admitting evidence of a defendant’s total revenue – as opposed to its revenue on infringing products 13 – or net worth for purposes of calculating statutory damages.”); In re Glob. Health Scis., No. SA CV 14 04-1486TJH, 2007 WL 4591679 (C.D. Cal. Aug. 21, 2007) (excluding “evidence of Defendants’ 15 wealth or financial condition”). Although this information might be worth considering in some rare 16 circumstances, here, the potential prejudice outweighs the probative value. 17 The testimony and evidence regarding Yahoo’s sophistication with respect to handling 18 copyrighted information on its servers is relevant to Yahoo’s defense that any failure to delete the 19 Images was inadvertent. This defense will necessarily involve some discussion of Yahoo’s processes 20 for deletion of images and its experience doing so. Accordingly, Yahoo’s Motion in Limine No. 2 is 21 GRANTED with respect to Yahoo’s net worth but is DENIED with respect to Yahoo’s 22 sophistication—namely, its processes and experience with handling and deleting copyrighted 23 material. 24 G. Third Party Infringement or Misconduct (Yahoo’s Motion in Limine No. 3, ECF 25 No. 171) 26 Yahoo argues that Evox should be prohibited from arguing that any third party has infringed 27 its copyrights. See ECF No. 171. Yahoo notes that Evox’s sole claim is direct infringement by 28 Yahoo, and that Evox does not allege contributory or vicarious infringement. Id. at 3. Yahoo is 1 particularly concerned that Evox may argue that Yahoo “leveraged” Evox images for search engine 2 optimization, based on the testimony of Evox’s proffered expert. Id. at 5. Yahoo argues that this 3 would be prejudicial and misleading. Id. at 6. 4 Evox responds that this information is directly relevant to its claims of copyright 5 infringement by Yahoo. See ECF No. 190. Evox argues that Yahoo’s failure to remove the images 6 from its publicly accessible servers after the agreement ended—which third party use of the images 7 is probative on—is directly relevant to damages and willfulness. See id. at 3–4. Per Evox, because 8 Yahoo has argued the images were stored “internally” whether third parties accessed them is highly 9 relevant. See id. at 2. 10 Upon consideration of the parties’ moving briefs, the Court finds that the testimony and 11 evidence at issue is irrelevant and unduly prejudicial. Evox asserts that this is relevant to damages, 12 but (as above) cites only high-level precedent that the jury may consider many factors (See F. W. 13 Woolworth, 344 U.S. at 232), and does not cite a single case where third-party infringement was 14 considered for damages. Evox’s arguments that this evidence is relevant for other reasons are 15 equally unavailing, and do not overcome the prejudice this evidence is likely to create, particularly 16 in terms of confusing the issues, misleading the jury, and wasting time. Accordingly, Yahoo’s 17 Motion in Limine No. 3 is GRANTED. 18 H. Abandoned Liability Theories (Yahoo’s Motion in Limine No. 4, ECF No. 172) 19 Yahoo argues that Evox should be precluded from referencing theories that it purportedly 20 abandoned at the motion to dismiss stage—reproduction and distribution—and never disclosed 21 information on. See ECF No. 172. Yahoo explains that the Third Amended Complaint (ECF No. 87, 22 “TAC”) dropped allegations related to these theories. See id. at 2. Because Evox did not disclose 23 information on these in discovery, Yahoo argues it would not be fair for Evox to reference them 24 now. See id. at 6. 25 Evox argues that it did not abandon these theories, and that the allegations in its Third 26 Amended Complaint gave Yahoo sufficient notice that the purportedly abandoned theories were still 27 in play. See ECF No. 191. Specifically, Evox points to allegations that Evox images could be “called 28 up” (TAC ¶ 66), images were “publicly accessible” and “could still be accessed by the public” (TAC 1 ¶¶ 82, 86), and Defendants were not “authorized to distribute, transmit, copy, display, or make 2 available” Evox images (TAC ¶ 89), among others. See ECF No. 191 at 3. Further, on a broader 3 level, Evox argues that Yahoo was clearly aware that Evox’s claims necessarily rested on the 4 theories of distribution and reproduction. Id. Evox argues that it did in fact disclose information on 5 these theories, including in response to interrogatories, where Evox indicated that it believes 6 Defendants “distributed, transmitted, and copied” Evox images. See id. at 6. 7 Upon consideration of the parties’ moving briefs, the Court finds that the additional theories 8 of liability at issue have been forfeited and waived by Evox, as discussed in the Court’s Order on the 9 parties’ Motions for Summary Judgment. Accordingly, Yahoo’s Motion in Limine No. 4 is 10 GRANTED. 11 I. Communications Between Counsel (Yahoo’s Motion in Limine No. 5, ECF No. 173) 12 Counsel for the parties exchanged emails about the production of page view data (discussed 13 above under “Discovery Disputes”), and Evox included certain of those emails in its motion for 14 summary judgment. Yahoo seeks to preclude such emails from being introduced at trial. See ECF 15 No. 173. Yahoo argues that these communications are not relevant, are prejudicial, lack foundation, 16 and that the underlying information can be obtained from other witnesses. See id. at 3. 17 In response, Evox concedes that “nearly all” of the emails in question are not relevant, but 18 argues that certain are relevant to understand additional documents that Yahoo produced alongside 19 the page view data. See ECF No. 192 (emphasis in original). Evox explains that it included a large 20 set of emails in its summary judgment motion for completeness. See id. at 2. Evox seeks to introduce 21 a small portion of these emails—which it describes as admissions by a party opponent—to make 22 clear that the additional documents produced by Yahoo were intended to limit Yahoo’s liability. Id. 23 at 4. Per Evox, such admissions are relevant to understanding these documents. See id. 24 Upon consideration of the parties’ moving briefs, the Court finds that the vast majority of the 25 communications at issue are irrelevant and unduly prejudicial, not to mention objectionable for other 26 reasons. The communications purporting to describe the documents produced in discovery are 27 relevant, not unduly prejudicial, and not objectionable for any other reason. They are proper 28 admissions of a party opponent. Accordingly, Yahoo’s Motion in Limine No. 5 is GRANTED in part 1 and DENIED in part. The parties are ordered to meet and confer regarding the “small portion of 2 emails” described by Evox that describe the documents produced. 3 J. “Making Available” Theories (Yahoo’s Motion in Limine No. 6, ECF No. 174) 4 Yahoo seeks to prohibit Evox from presenting evidence or argument that Yahoo should be 5 liable solely because Yahoo “made available” Evox’s images, as opposed to actually serving the 6 images to a substantial number of people. See ECF No. 174. Per Yahoo, both this Court and the 7 Ninth Circuit have rejected this theory, but Yahoo is now concerned that Evox intends to bypass 8 these rulings via its statutory damages claim—Evox will argue that so long as a small number of 9 images were served, damages should be enlarged because more images were made available. See id. 10 at 4. 11 Evox argues that Yahoo’s motion is overbroad and would prohibit Evox from evidence 12 necessary to understand what occurred here. See ECF No. 193. Evox argues that it must explain to 13 the jury that AOL maintained a repository of approximately 300,000 Evox images, and that these 14 were still available, in order to lay the foundation for the infringement that occurred. See id. at 1. 15 Further, Evox argues that evidence on what was made available is relevant to other issues, including 16 public display liability, and relevant to rebutting Yahoo’s arguments on “internal” storage, innocent 17 infringement, and lack of willfulness. See id. at 1–5. Finally, Evox argues that Yahoo overstates 18 previous rulings, and that to the extent they settle this issue, they should be reconsidered in light of 19 Bell v. Wilmott Storage Servs., LLC, 12 F.4th 1065 (9th Cir. 2021). 20 Upon consideration of the parties’ moving briefs, the Court finds that it is improper to 21 prohibit Evox from arguing to the jury—just as in Bell—that Yahoo violated its display right by 22 displaying the images on a server that was publicly accessible to anyone with an Internet connection. 23 This is the state of the law in the Ninth Circuit, as the Court has explained in its Order on the parties’ 24 Motions for Summary Judgment. Accordingly, Yahoo’s Motion in Limine No. 6 is GRANTED in 25 part and DENIED in part. 26 / / / 27 / / / 28 1 K. 2017 and 2022 Reports by Michael Del Monte (Yahoo’s Motion in Limine No. 7, 2 ECF No. 178) 3 Yahoo seeks to exclude reports prepared by longtime Evox Consultant Michael Del Monte 4 (“Del Monte”) in 2017 and 2022. See ECF No. 178. Del Monte “scrape[d]” AOL’s Autoblog 5 website and concluded that Evox images existed on AOL’s servers. See id. at 2. He eventually 6 submitted an expert report in 2023, but his 2017 and 2022 reports are as a fact witness. See id. at 2– 7 3. Yahoo argues that these reports are improper testimony from a lay witness, and that they are 8 inadmissible hearsay. See id. at 4–8. Yahoo further argues that they are unduly prejudicial under 9 Rule 403, as a fact witness should not be permitted to offer expert-esque opinions. See id. at 8–10. 10 Evox argues that Yahoo is seeking to exclude key evidence on a technicality. See ECF No. 11 194. Evox notes that it disclosed Del Monte as a fact witness in its initial disclosures, eventually 12 updated these disclosures to make Del Monte an expert, and that Yahoo opted not to retain a rebuttal 13 expert. See id. at 1. Further, the story of Del Monte’s 2017 and 2022 reports is crucial to 14 understanding what occurred here and how Evox discovered the facts underlying this action. See id. 15 Yahoo deposed Del Monte, asked about these reports at length, and then deposed him again as an 16 expert. See id. at 3–5. Evox argues that in context, despite the unusual situation where Del Monte 17 was initially a fact witness and then an expert, the change in status was harmless and the Court 18 would be within its discretion to admit his reports. See id. at 6–10. 19 Upon consideration of the parties’ moving briefs, the Court finds that the testimony offered 20 by Del Monte is proper and he was properly disclosed. The Court finds that his reports may, 21 however, constitute inadmissible hearsay. Unless Evox can identify a proper hearsay exception or 22 explain why the reports fall outside of the hearsay definition, the reports are inadmissible. 23 Accordingly, Yahoo’s Motion in Limine No. 7 is GRANTED without prejudice to Evox 24 demonstrating outside of the presence of the jury why the reports are not inadmissible hearsay. 25 L. Expert Testimony of Jonathan Hochman (Yahoo’s Motion in Limine No. 8, ECF No. 26 180) 27 Jonathan Hochman (“Hochman”) is Evox’s technical expert and submitted two reports. The 28 first addresses the license agreement, what AOL should have done when it ended, and AOL’s state 1 | of mind, while the second uses data from Google to calculate how many images were displayed after 2 | the agreement ended. See ECF No. 180 at 1-2. Yahoo seeks to exclude these reports, arguing that 3 || the first focuses on legal questions that are not appropriate for an expert and beyond Hochman’s 4 | expertise, and that the second is not based on reliable principles and methods. See id. at 3-13. Yahoo 5 || takes particular issue with certain conclusions, including Hochman’s interpretation of duties under 6 || the contract, Hochman’s conclusions on AOL’s state of mind, and calculations based on purportedly 7 | questionable assumptions. See id. 8 Evox characterizes Hochman’s reports significantly differently and argues that they should 9 | be admitted. See ECF No. 195. Evox emphasizes that Hochman’s first report provides important 10 | background info on how the images were used by AOL under the agreement and explains that the 11 | disputed portions focus on the standard of care when such agreements end, while the second report 12 | considers page view analytics. See id. at 2-4. Evox argues that all of this is appropriate expert 13 | testimony and is within Hochman’s expertise. See id. at 5-11. Evox stresses that while Yahoo may 14 | disagree with Hochman’s reports, Hochman is not obligated to accept Yahoo’s theories of the case 15 | nor accept Yahoo’s version of disputed facts. See id. 16 Upon consideration of the parties’ moving briefs, the Court finds that the following topics are 17 | appropriate subjects of expert testimony on which Hochman is qualified to opine: 18 e Analysis of AOL Workflow and Image Delivery 19 e Analysis of Post-License Image Accessibility 20 e What technical steps Defendant could have taken to render EVOX images 21 inaccessible after the term of the license agreement. 22 e Analysis of Defendant’s Page View Analytics Data, and Related Calculations 23 | The following topics are not appropriate subjects of expert testimony on which Hochman is qualified 24 | to opine: 25 e Standard of Care 26 e That Defendant’s failure to render EVOX images inaccessible after the term of the 27 license agreement breached the applicable standard of care. 28

1 Accordingly, Yahoo’s Motion in Limine No. 8 is GRANTED in part (with respect to the “not 2 appropriate” topics listed above) and DENIED in part (with respect to the “appropriate” topics listed 3 above. 4 M. Expert Testimony of Jeffrey Sedlek (Yahoo’s Motion in Limine No. 9, ECF No. 181) 5 Yahoo argues that the Court should exclude three categories of opinions from Evox’s expert 6 Jeffrey Sedlek (“Sedlek”). See ECF No. 181. First, Yahoo seeks to exclude opinions about creative 7 expression, originality, copyright registrations, and related issues regarding Evox’s photos. See id. at 8 2–5. All of these opinions relate to whether the copyright registrations are valid and owner by Evox, 9 which Yahoo describes as a legal conclusion that is improper for expert testimony. See id. Second, 10 Yahoo seeks to exclude Sedlek’s opinions that each individual image (of nearly 300,000) has 11 independent economic value, which Yahoo argues is based on a report that 3,667 images were 12 individually licensed. See id. at 5–7. Yahoo describes this opinion as ipse dixit and unsupported by 13 the evidence, as well as unhelpful and an inappropriate usurping of the jury’s role. See id. Third, 14 Yahoo seeks to exclude Sedlek’s opinions on third-party uses (addressed above in Yahoo’s third 15 Motion in Limine), the license agreement, and willfulness. Yahoo describes these as legal 16 conclusions, and notes that Sedlek’s opinions have been excluded by other courts on this basis. 17 Evox responds that these are appropriate subjects for expert testimony and will be helpful to 18 the jury. See ECF No. 196. Evox argues that the first category is necessary to assist the jury in 19 determining whether the images are a compilation—which the parties agree is at issue—and not just 20 whether the copyrights are valid and owned by Evox. Id. at 3–5. Whether each photo has originality 21 is part of this inquiry, per Evox. See id. However, Evox concedes that expert testimony on ownership 22 and validity is unnecessary, so long as the jury is instructed on relevant law. See id. at 5. Second, 23 Evox argues that Sedlek’s opinions will be useful to the jury in evaluating independent value, and 24 that Sedlek does not usurp the jury’s role and actually come to a conclusion on this test. See id. at 6– 25 9. Third, Evox argues that Sedlek’s opinion on third party use are relevant to the direct infringement 26 theory and willfulness, as a jury could conclude that the failure to prevent third parties from 27 accessing the photos shows willfulness. See id. at 9. Evox explains that it does not intend for Sedlek 28 1 to offer any opinion on the operation of the License Agreement, any breach, or the ultimate issue of 2 willfulness. See id. at 9–10. 3 Upon consideration of the parties’ moving briefs, the Court finds that the proffered expert 4 testimony is relevant to the disputed issue of whether the images are a compilation, unless and until 5 the parties reach a stipulation on this issue. The proffered expert opinion on the group registration 6 process, third-party infringement, the License Agreement, licensing practices, and willfulness are 7 improper. No expert testimony is needed on the state of the law in the Ninth Circuit regarding 8 whether group registration renders a set of images a compilation. Accordingly, Yahoo’s Motion in 9 Limine No. 9 is GRANTED in part and DENIED in part (with respect to the group registration 10 process, third-party infringement, the License Agreement, licensing practices, and willfulness). 11 N. Expert Testimony of Michael Del Monte (Yahoo’s Motion in Limine No. 10, ECF 12 No. 182) 13 Yahoo moves to exclude the expert report Del Monte eventually wrote (distinct from the 14 reports discussed above). See ECF No. 182. Yahoo first argues that Del Monte intends to improperly 15 testify on facts at issue as an expert. See id. at 3–4. Second, Yahoo argues that expert opinions Del 16 Monte reached are not reliable, as he did not fully explain how he conducted the analysis. See id. at 17 4–5. Third, Yahoo seeks to exclude all testimony on the “’04 file,” a spreadsheet produced by AOL 18 that Del Monte identified discrepancies in, which Yahoo claims it does not intend to rely on and that 19 Yahoo’s expert does not rely on. See id. at 6–7. Third, Yahoo seeks to exclude testimony on use of 20 images after the license period. See id. at 8–10. Del Monte did not review the license itself, but made 21 an assumption that the time period was triggered by AOL downloading an image. See id. Yahoo 22 argues that the time period was in fact triggered by display of the image—a significantly different 23 event—and that this renders the analysis incorrect and unhelpful. Finally, Yahoo argues that all of 24 Del Monte’s testimony is unduly prejudicial under Rule 403. 25 Evox makes several arguments in response. See ECF No. 197. First, Evox notes that Yahoo 26 stipulated that Del Monte should be an expert, and that Yahoo’s new objection that he is improperly 27 opining on facts is in “disregard” of the prior agreement. See id. at 2. Evox disputes that Del Monte 28 does not explain how he conducted his analysis and argues that any such lack of explanation should 1 | be tested at trial. See id. at 4-5. Evox concedes that testimony on the 04 file will be unnecessary if 2 || Yahoo does not rely on it. See id. at 5. Finally, Evox argues that Yahoo’s objection to Del Monte’s 3 || analysis of images used after the license period focuses on the wrong issue. See id. at 7-10. Evox 4 | argues that /egal analysis is not an expert’s job, and so whether Del Monte read or correctly 5 || interpreted the license agreement is not the key question (Evox also disputes whether Yahoo’s 6 || interpretation is correct). See id. Del Monte’s analysis focuses on the fact that images were used 7 | once it ended. See id. Evox argues that all of this is helpful to the jury. See id. 8 Upon consideration of the parties’ moving briefs, the Court finds that the witness offered is a 9 | designated expert with appropriate credentials. Defendants’ arguments go towards factual 10 | disagreement, bias, and weight, but not his actual qualifications or an absence of the basis for 11 | opinions. Accordingly, Yahoo’s Motion in Limine No. 10 is DENIED. 12 13 14 IT IS SO ORDERED. 15 16 Dated: July 28, 2023 ff —— 17 MAAMF¥ EWUSI-MENSAH FRIMPONG 18 United States District Judge 19 20 21 22 23 24 25 26 27 28