Case 1:18-cv-02637-LGS-SDA Document 134 Filed 11/20/20 Page 1 of 4
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`Brendan Hughes
`+1 202 842 7826
`bhughes@cooley.com
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`November 20, 2020
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`Via CM/ECF
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`The Hon. Stewart D. Aaron
`Daniel Patrick Moynihan United States Courthouse
`500 Pearl Street
`New York, NY 10007
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`Re: SM Kids, LLC v. Google LLC, et al. (18-cv-2637)
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`Dear Judge Aaron:
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`Pursuant to Rule II.B of the Court’s Individual Practices, on behalf of Google, as well as
`third parties1 Timothy Alger, Rose Hagan, and Pavni Diwanji, we write to request a pre-motion
`discovery conference to address a disagreement over Plaintiff’s Notice of Subpoenas to the third
`parties under Rule 45. In a vexatious attempt to increase Google’s cost and burden, Plaintiff seeks
`to depose Mr. Alger, Ms. Hagan, and Gina Paik, former Google in-house counsel, and Ramsey Al-
`Salam, former outside counsel, on topics centering on attorney-client privileged information, when
`it could obtain the same (or better) information from other witnesses. Plaintiff also seeks to depose
`Ms. Diwanji on Google children’s entertainment offerings, a topic of no relevance on which it has
`already noticed as many as five other depositions, including a Rule 30(b)(6) deposition. Therefore,
`for the reasons set forth in this letter, pursuant to Rule 45(d)(3)(A), we respectfully request that
`this Court enter an order quashing the subpoenas of former Google attorneys Timothy Alger, Rose
`Hagan, Gina Paik, and Ramsey Al-Salam, and the subpoena of Pavni Diwanji.2
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`1. Timothy Alger, Rose Hagan, Gina Paik, and Ramsey Al-Salam
`Plaintiff has subpoenaed four former Google attorneys for deposition: Timothy Alger,
`former Head of Litigation for Google who left the company in 2011; Rose Hagan, former Chief
`Trademark Counsel for Google who left in 2010; Gina Paik, former Legal Director for Google
`who left in 2019; and Ramsey Al-Salam of Perkins Coie, who represented Google as outside
`counsel in the litigation that resulted in the 2008 trademark coexistence agreement. Plaintiff has
`not identified the specific deposition topics it intends to question the deponents about or any
`specific personal knowledge that these individuals have about any issues in dispute in this litigation
`that would justify their depositions. Google has offered to designate a 30(b)(6) witness as to the
`settlement agreement topics in the 30(b)(6) deposition notice.
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`1 In addition to this pre-motion letter, we have also served objections on behalf of each individual third party in
`accordance with the requirements of Rule 45. We also anticipate being able to represent Ms. Gina Paik, another third
`party, but we received notice of her subpoena only yesterday and therefore have not yet had the opportunity to engage
`her as a client.
`2 The procedural history concerning this pre-motion letter is set out in the Certification of Brendan Hughes, attached
`hereto as Exhibit A.
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`Case 1:18-cv-02637-LGS-SDA Document 134 Filed 11/20/20 Page 2 of 4
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`The Hon. Stewart D. Aaron
`November 20, 2020
`Page 2
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`Under Rule 45, a court “must quash or modify a subpoena that . . . requires disclosure of
`privileged or other protected matter, if no exception or waiver applies.” Fed. R. Civ. P.
`45(c)(3)(A)(iii). The policy considerations of Rule 45 are particularly heightened in the context
`of depositions of opposing counsel, which are “disfavored” in this Circuit. United States v.
`Yonkers Bd. of Educ., 946 F.2d 180, 185 (2d Cir. 1991). Courts enforce this presumption against
`depositions of counsel because “even a deposition of counsel limited to relevant and nonprivileged
`information risks disrupting the attorney-client relationship and impeding the litigation.” Ferrari
`v. County of Suffolk, No. cv-10-418, 2012 WL 13109925, at *2 (E.D.N.Y. Mar. 28, 2012). The
`same presumption governs regardless of whether the attorney is in-house or outside counsel,
`Tailored Lighting, Inc. v. Osram Sylvania Products, Inc., 255 F.R.D. 340, 344 (W.D.N.Y. 2009),
`or whether the attorney still represents the party at the time of the subpoena, see id. (quashing
`subpoena of former attorney for defendant); In re Subpoena Issued to Dennis Friedman, 350 F.3d
`65, 66 (2d Cir. 2003) (dismissing as moot an appeal from order quashing deposition of former
`counsel to defendant).
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`In deciding whether to permit the deposition of opposing counsel, courts generally consider
`four factors: (1) “the need to depose the lawyer,” (2) “the lawyer’s role in connection with the
`matter on which discovery is sought and in relation to the pending litigation,” (3) “the risk of
`encountering privilege and work-product issues,” and (4) “the extent of discovery already
`conducted.” Dennis Friedman, 350 F.3d at 72. The Court should take into consideration “all of
`the relevant facts and circumstances to determine whether the proposed deposition would entail an
`inappropriate burden or hardship” on the party. Id.
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`Under this standard, the subpoenas of Google’s former counsel should be quashed. First,
`Plaintiff has made no showing of a particular need – and there could be none – to depose four
`former attorneys for Google. Plaintiff has not identified any information that it can obtain only
`from them. That failure is dispositive as to the first factor. KOS Building Group, LLC v. R.S.
`Granoff Architects, P.C., No. 19-cv-2918, 2020 WL 1989487, at *4 (S.D.NY. Apr. 24, 2020)
`(denying deposition of copyright attorney because the information sought either could be or was
`already obtained from another source). Plaintiff also has not identified any specific topics on
`which it plans to depose the attorneys. In fact, if the identical document requests accompanying
`the subpoenas for Mr. Alger, and Ms. Hagan, and Mr. Al-Salam are any indication, Plaintiff has
`subpoenaed the Google attorneys to testify about the same general topics. That is a far cry from
`the necessary showing of “need” required in order to depose opposing counsel under the law of
`this Circuit. See Chord Assoc. LLC v. Protect 2003-D LLC, No. cv-07-5138, 2011 WL 13302691,
`at *5 (E.D.N.Y. Mar. 31, 2011) (requiring a list of “highly specific topics” of information not
`obtainable from another source before considering permitting deposition of attorney). To the
`extent there is a need, a 30(b)(6) deposition (with proper limitations to minimize the risk to
`privilege) would be more than sufficient to meet it.
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`Case 1:18-cv-02637-LGS-SDA Document 134 Filed 11/20/20 Page 3 of 4
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`The Hon. Stewart D. Aaron
`November 20, 2020
`Page 3
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`Second, the involvement of the attorneys in the underlying litigation militates against
`deposing them, either because (in Ms. Paik’s case), they were not involved or because (in Mr.
`Alger’s, Ms. Hagan’s and Mr. Al-Salam’s cases), their involvement was only in their capacity as
`attorneys, such that their depositions would center on privileged matters. Ms. Paik was not
`involved in the 2008 negotiations, and her only subsequent involvement was as legal advisor to
`Google about the agreement. There is no relevant, non-privileged matter on which she could offer
`testimony. Mr. Alger, then Head of Litigation, was not involved in the day-to-day substance of
`the settlement negotiations in 2008, as he arrived at Google only in October 2008, two months
`before the execution of the agreement. Being Head of Litigation, Mr. Alger executed the
`agreement, but he has no personal knowledge of the specifics of its negotiation or meaning. Rose
`Hagan, then Chief Trademark Counsel, was somewhat involved in the negotiations of the
`settlement in her capacity as Google’s counsel, making it likely that most if not all of her testimony
`would center on privileged information. Moreover, Ms. Hagan was already deposed in the
`underlying lawsuit in 2008. Any recollections of relevant facts were far fresher then than they
`would be years later and would be available in Ms. Hagan’s 2008 deposition transcript. Finally,
`Mr. Al-Salam’s only role in the negotiations was to advise Google as its outside litigation counsel.
`It is hard to imagine a greater risk to the attorney-client privilege than deposing Mr. Al-Salam.
`KOS Building Group, LLC, 2020 WL 1989487, at *5 (noting that the second factor militates
`against deposing the attorney where the “[attorney’s] role in connection with the subjects as to
`which discovery is sought is as [a party’s] lawyer . . . [s]ince deposing [attorney] would therefore
`encroach upon the attorney-client relationship”). Those same considerations here also weigh
`against permitting the depositions of Google’s attorneys.
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`Third, the extent – or rather, lack thereof – of discovery conducted thus far militates against
`permitting any depositions of counsel until Plaintiff makes a showing that it cannot get that
`information from another deponent. See Ferrari, 2012 WL 13109925, at *2 (granting motion to
`quash deposition subpoena where “Plaintiff has provided no indication that [defendant’s former
`attorney] is the only source for the information sought” and requiring that plaintiff look to other
`sources first). In fact, Plaintiff admitted as much when, during the meet-and-confer process,
`Plaintiff’s counsel offered to hold the depositions of Ms. Hagan and Mr. Al-Salam (though not
`Mr. Alger or Ms. Paik) in abeyance pending a 30(b)(6) deposition and the deposition of Adam
`Barea (which Defendants also oppose). A mere delay is insufficient to cure the improper
`subpoenas of multiple former Google attorneys. At the very least, Plaintiff should be required to
`make a showing that the information it seeks from the Google attorneys cannot be obtained from
`another source before the Court permits depositions of any of the Google attorneys. Even then, it
`could not possibly be necessary to depose all four.
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`2. Pavni Diwanji
`Plaintiff has also subpoenaed yet another witness to testify about Google’s children’s
`offerings, Pavni Diwanji. As stated in Defendant’s November 20 letter seeking a protective order,
`Google has designated Rob Newton as a 30(b)(6) witness to testify about Google’s various
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`Case 1:18-cv-02637-LGS-SDA Document 134 Filed 11/20/20 Page 4 of 4
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`The Hon. Stewart D. Aaron
`November 20, 2020
`Page 4
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`offerings for children, as well as Ruchi Bezoles who will testify in her individual capacity about
`similar topics. It would be cumulative and unduly burdensome to depose Ms. Diwanji, who left
`Google two years ago and who possesses no relevant documents, when current Google employees
`are better situated to testify on the same topics.
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`Accordingly, Google, as well as third party deponents Alger, Hagan, and Diwanji, respectfully
`request that the Court issue an order quashing the subpoenas of Tim Alger, Rose Hagan, Gina
`Paik, Ramsey Al-Salam, and Pavni Diwanji.3
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`Sincerely,
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`Cooley LLP
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`By: /s/ Brendan Hughes
`Brendan Hughes
`Attorneys for Defendants
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`3 In the event that Plaintiff deposes other witnesses and is still unable to obtain the information it seeks, Plaintiff can
`move the Court to permit a deposition upon a showing (1) that the information could not be obtained elsewhere and
`(2) of particular, highly specific topics, on which the witness would be deposed, in order to avoid encroaching on
`attorney-client privileged topics. See Chord Assoc. LLC v. Protect 2003-D LLC, No. cv-07-5138, 2011 WL 13302691,
`at *5 (E.D.N.Y. Mar. 31, 2011) (denying motion for deposition without prejudice, to be renewed upon a showing that
`the information sought could not be obtained from another source and requiring a list of “highly specific topics” for
`any potential deposition).
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