No. 02 C 4721 Page 4

property. While defendants argue that this is impossible, we find no authority in support of

their argument. See Bucklew y. Hawkins, Ash, Baptie & Co., LLP, 329 F.3d 923, 928 (7" Cir,

2003) (holding that entire computer program may be copyrightable even though individual
parts were not because the program represented a combination of format choices for which
there were an “immense number of alternative combinations”). Plaintiff also lists specific
protected information contained in the code that it believes defendants used in creating their
software.

The analogy to a movie used by the Seventh Circuit in Bucklew is instructive here. 329
F.3d at 929. Nothing prevents CA from claiming a copyright in the entire source code just as
nothing prevents the creator from holding a copyright in an entire film. Id. This result is the
same even if both the source code and the film contain a number of elements that are not
themselves protectable. Jd. If it is to prevail on its claims, CA must show that defendants have
infringed specific elements contained within the code. Moreover, it must go on to show that
these elements were its original creations and that they were not the only way of accomplishing
functional goals of the source code. Id. If plaintiff cannot show this, its infringement claims
are barred by the doctrines of merger or scénes @ faire. Id.

In order to allow defendants to adequately prepare a defense, plaintiff must, at some
point, specifically disclose the elements of source code it believes were copied and state why it
believes those elements were protected by law. While helpful, plaintiff’s initial list of areas
where copying may have occurred is not enough to fully inform defendants of these claims. The
question then is simply one of timing. Obviously, the sooner such disclosures are made, the

better. It is a waste of resources for defendants and their attorneys to spend time and money



No. 02 C 4721 Page3

that defendants have an opportunity to interview these employees on their own, we believe that
the disclosure of the names is extremely unlikely to have a prejudicial effect on CA or give

defendants any insight into its preparation for litigation. See American Floral Services, Inc.

y. Florists’ Transworld Delivery Ass’n., 107 F.R.D. 258, 260-61 (holding that “the identity of
witnesses having knowledge of the relevant facts is discoverable information”). Instead, it will
serve only to expedite the gathering of relevant information. We also note that, while the list
of Quest employees on CA’s Rule 26 disclosure is manageable, CA has interviewed at least one
witness, Robert Bersano, who was not listed in that disclosure.

We decline, however, to order CA to turn over additional information relating to these
interviews. Such information does have the possibility of giving defendants a significant insight
into the litigation strategy of CA. Moreover, such disclosures are unnecessary as defendants
will have a fair opportunity to contact and interview these witnesses regarding any statements
that they have made to CA. We see no reason why plaintiff should be forced to assist
defendants in their own witness interviews.

II. Motion to Compel Disclosure of Copyright and Trade Secret Allegations

Defendants next seek an order compelling CA to specifically disclose its allegations of
trade secret misappropriation and copyright infringement. They claim that CA has done little
more than allege that its Enterprise Database Administration project (EDBA) source code is
protected by the federal Copyright Act, 17 U.S.C. § 107 et seq., and the Illinois Trade Secrets
Act, 765 ILCS 1065/1 et seg., and contend that the time has come for plaintiff to be far more
specific about what is protected and what has been copied.

Plaintiff contends that its EDBA source code, in its entirety, is protected intellectual



No. 02 C 4721 Page 5

pursuing discovery without fully knowing what plaintiff claims. We recognize, however, that
we are dealing with a highly technical and complex subject area in which the parties, their
counsel (and certainly the judge) are dependent upon experts. Plaintiff cannot fully articulate
the claims until its experts’ reports are complete — and defendants cannot be called upon to
complete their preparations in defense until the claims have been fully articulated. But when?
Sooner is better than later, and we need to pick some dates.
CONCLUSION

For the foregoing reasons, defendants’ motion to compel discovery relating to plaintiff’s
witness interviews is granted in part and denied in part; their motion to compel disclosure of
the trade secret and copyright infringement allegations is denied. Plaintiff is hereby ordered
to disclose the names of current and former Quest employees it has interviewed as part of this

litigation.

Jorne 8 Moa

v. JAMES B. MORAN

, ior Judge, U. S. District Court
Sag “d 4 » 2003.



Minuleder Form (06/97)

United States District Court, Northern District of Illinois

(9)

Ni f Assigned Judy Sitting Judge if Other
vor Magistrate Judge James B. Moran than Assigned Judge
CASE NUMBER 02 C 4721 DATE 9/16/2003
CASE Computer Associates etc. Vs. Quest Software, Inc. et al.
TITLE

[In the following box (a) indicate the party filing the motion, e.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature

of the motion being presented.}

qu)

MOTION:
Memorandum Opinion and Order
DOCKET ENTRY:
(1) a Filed motion of [ use listing in “Motion” box above.]
(2) Oo Brief in support of motion due
(3) o Answer brief to motion due___. Reply to answer briefdue__.
(4) oO Ruling/Hearingon Set for__— at
(5) a Status hearing(held/continued to] (set for/re-set for]on__———ssetfor__— at
(6) 0 Pretrial conference(held/continued to] (set for/re-set for]on___—s—ssetfor_ at.
(7) oO Trial[set for/re-set for]on___at
(8) QO [Bench/Jury trial] [Hearing] held/continued to___at
(9) im This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to}
OOFRCP4(m) OLocal Rule 41.1 CFRCP41(a)(1) CO FRCP41(a)(2).
(10) =f {Other docket entry] Enter Memorandum Opinion and Order. For the foregoing reasons,

defendants’ motion to compel discovery relating to plaintiffs witness interview is granted in part and
denied in part; their motion to compel disclosure of the trade secrets and copyright infringement
allegations is denied. Plaintiff is hereby ordered to disclose the names of current and former Quest
employees it has interviewed as part of this litigation. Status hearing set for October 9, 2003 at 9:15am.

| (For further detail see order attached to the original minute order.]

No notices required, advised in open court,

No notices required.
req ‘number of notices

Notices mailed by judge's staff,

SEP 17 2003

Notified counsel by telephone. date docketed

Docketing to mail notices

Mail AO 430 form. 48NGI LOW ESIO SN
iM 3

Copy to judge/magistrate judge. Wu

SRE Nd Ob dS CO

Date/time(iegeived in
central Clerk's Office mailing deputy initials

dockating deputy initials

dato mailed notice
courtroom

WAH deputy's
initials



DOCKETED

IN THE UNITED STATES DISTRICT COURT

’ FOR THE NORTHERN DISTRICT OF ILLINOIS SEP 1 7 2003
EASTERN DIVISION

COMPUTER ASSOCIATES )
INTERNATIONAL, INC., a Delaware )
corporation, )
)

Plaintiff, y

)

vs. ) No. 02 C 4721

)

QUEST SOFTWARE, INC., a California )
corporation, et al., )
)

Defendants. y

MEMORANDUM OPINION AND ORDER

Plaintiff Computer Associates International, Inc. (CA) brought this action against
Quest Software, Inc. (Quest) and four Quest employees alleging copyright infringement and
trade secret misappropriation. Defendants filed two discovery motions, the first seeking to
compel CA to identify which current and former Quest employees it has interviewed and to
turn over all related statements, and the second seeking to compel CA to more specifically
disclose its copyright and trade secret allegations. For the following reasons, defendants’ first
motion is granted in part and denied in part and their second motion is denied.

CA alleges that Quest, with the help of former CA employees, improperly used the
computer source code created by CA to create its database administration software, thereby
gaining a significant commercial advantage at CA’s expense. CA claims that it first learned
of Quest’s actions through an anonymous letter sent by a Quest employee and that it has
subsequently interviewed other Quest employees about the alleged use of the source code.

Rule 26 of the Federal Rules of Civil Procedure allows parties to obtain discovery of any

aac



No, 02 C 4721 Page 2

relevant evidence. This discovery encompasses any matter that affects or could affect anything

at issue in the litigation. See Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978).

The party objecting to a discovery request bears the burden of demonstrating why such
discovery is improper. Chicago Dist. Council of Carpenters Pension Fund v. D.P. Builders,
Inc., 1997 WL 685021, *3 (N.D. Ill. 1997). Rule 37(a) allows parties to file a motion seeking an
order to compel discovery if the other party resists its good faith efforts.

I. Motion to Compel Discovery Relating to Witness Interviews

Defendants first seek an order compelling CA to disclose the names of all current and
former Quest employees! it has interviewed and to turn over all statements made by these
witnesses as part of the interviews. CA has refused to turn over this information, arguing that
it is protected by the attorney work product privilege and that defendants can find any
potential witnesses in the initial Rule 26 disclosure.

Plaintiff cannot use the work product privilege to protect the underlying facts in the
dispute from being discovered. Thomas & Betts Corp. v. Panduit Corp., 1997 WL 603880, *6
(N.D. Ill. 1997). Of course, defendants may not use the discovery process to improperly gain
insight into plaintiffs lawyers’ preparation for the case. Board of Education of Evanston
Township High School Dist. No. 202 v. Admiral Heating and Ventilating, Inc., 104 F.R.D. 23,
32 (N.D. Ill. 1984).

Balancing these concerns, we find that CA must turn over the names of the current and

former Quest employees it has interviewed in connection with this litigation. While it is true

‘In their briefs supporting this motion, defendants appear to seek the names of all witnesses
interviewed by plaintiff. They do not advance any arguments as to why we should order the production of
the names of witnesses other than those who have worked for Quest. Also, Interrogatory No. 12, which is at
the center of this dispute, mentions only Quest employees. For these reasons, we deal with the motion as
though it relates only to former or current employees of Quest.