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 Civil Action No. 01-72987
 District Judge Zatkoff
WEBFEATS and HENRY MISHKOFF, Magistrate Judge Komives



This motion pertains to Count IV of the Complaint, which charges defendant Henry Mishkoff with copyright infringement because he copied a drawing and a map from the official web site maintained by plaintiff Taubman Company for The Shops at Willow Bend. By order dated April 4, 2002, the Court granted the motion for leave to amend the Complaint by adding Count IV. This order also postponed by two months the trial of the original trademark claims at which the Court will decide whether to make permanent the two preliminary injunctions that it has issued, and authorized approximately eight weeks of discovery to address the new copyright claims. Within days after receiving the April 4 order, Mishkoff sent Taubman interrogatories and requests for production of documents designed to support his defenses in the case, especially the defense of fair use. However, rather than provide honest answers to these discovery requests, plaintiff has stonewalled, presenting frivolous and inconsistent relevance objections to almost every one of the discovery requests, responding to key requests with pleas of ignorance. As provided by Local Rule 37.2, a copy of the requests and responses are submitted with this memorandum.

On May 25, Mishkoff moved the Court to compel Taubman to respond promptly to the outstanding discovery, and in the alternative, either to postpone the scheduled trial on Count IV of the complaint or to impose sanctions under Rules 37(b)(2) and 37(d) by declaring Taubman's "answers" so evasive, incomplete, and misleading as to constitute non-answers and hence merit sanctions. On June 13, the Court directed Mishkoff to file separate motions on the issue of compelling discovery and the issue of case scheduling (or other sanctions), and struck the pending motion without prejudice to the filing of such separate motions. Accordingly, Mishkoff now moves the Court to compel discovery. A scheduling motion will be filed shortly. This memorandum largely tracks the arguments previously submitted in support of compelled discovery, and also addresses arguments advanced by Taubman in the opposition memorandum ("TaubOpp.") that it filed before the first motion to compel was stricken.


Mishkoff admits that he copied the drawing and the map over which Taubman has sued him. The principal issues on the copyright claim are (1) whether Taubman is the valid owner of the copyright in the two items even though they were authored by another company, JPRA and Associates, allegedly as a work for hire, and (2) whether Mishkoff made a fair use of the items on his "fan" web site about The Shops at Willow Bend. Accordingly, Mishkoff posed interrogatories and requests to produce that asked about the documentary and other bases for the assertion of ownership of the copyright, and about the various statutory factors governing the defense of fair use established by Congress in section 107 of the Copyright Act.

To pursue the first issue, Miskoff asked Taubman to identify all documents and communications establishing Taubman's ownership of the copyright of materials authored by JPRA and Associates – which is identified in the copyright registration document attached to the Amended Complaint as Exhibit C.

[Note: The request was not limited to the two graphics on which Taubman has sued here for reasons relating to the fourth fair use factor, an issue discussed later in this memorandum at 7-10.]

A related document request asked Taubman to produce all documents establishing its ownership of JPRA-authored materials. Taubman did not object to this interrogatory or document request, but purported to provide an answer, asserting that an assignment of the copyright from JPRA was attached. In fact, the assignment was not attached to the responses, but was sent by telecopier in response to the pre-motion conference held between counsel on May 22, 2002.

There are, however, several aspects of the document (a copy of which is attached) that show the incompleteness of the response. First, the Interrogatories asked Taubman to identify the authors or transmitters and recipients of all documents, providing the standard definition of "identify," including such information as name, address, telephone number, and similar information. The document itself does not contain most of that information; there is a handwritten address that is not legible, and there are two signatures – that of the assignor and that of the notary – that are completely illegible. Thus, for example, although Taubman's counsel suggested during the pre-motion conference that Mishkoff should obtain certain information by asking JPRA, Taubman has deliberately withheld the identifying information that would have allowed Mishkoff to take JPRA's deposition before the discovery cutoff.

[Note: Similarly, in response to an Interrogatory asking Taubman to "identify" the persons who have knowledge of the facts surrounding the claims in the case, Taubman simply listed "Representative of JPRA who created, assigned work," without giving any names or other identifying information.]

Taubman has also not provided any documents establishing that the work being assigned included the two graphics over which Mishkoff has been sued. The assignment is of a work identified in the assignment as the "The Shops at Willow Bend Artwork." The copyright registration, however, is of the "Shops at Willow Bend Artwork," without the initial "The." This difference may be significant because, in refusing to provide information about other documents authored by JPRA in connection with The Shops at Willow Bend (No. 3), Taubman asserts that there is "much information" involved. Taubman must have documents and knowledge of oral communications that might show whether the two items on which Mishkoff has been sued are, in fact, among the items assigned by the document that has been provided. Indeed, without such documents or communications, Taubman may have difficulty establishing the relevant assignment.

Moreover, Mishkoff has reason to believe that the two graphics in question are not the only works authored by JPRA in which Taubman owns the copyright. Taubman's web sites have featured artwork relating to The Shops at Willow Bend bearing copyright notices dated 2000 and 2001 and identifying Taubman as the owner of the copyright. Given Taubman's implicit acknowledgment (in its objections to later interrogatories) that JPRA has in fact authored extensive artwork for it about the mall, it is reasonable to infer that Taubman must have documentation showing that ownership. Moreover, during the pre-motion discovery conference, one of Taubman's counsel acknowledged that she had not consulted any representative of Taubman in answering the interrogatories. In those circumstances, there is good reason to question the adequacy of Taubman's search for documents and other information responsive to Mishkoff's discovery requests, and the Court should order such a search to be conducted and a complete answer provided.

Taubman's opposition to the prior motion asserts that the assignment does, in fact, convey to Taubman the copyright in "these two items" – i.e., the two graphics over which Taubman has sued Mishkoff. TaubOpp 1. But there are presumably persons who know that fact, persons who, when plaintiff attempts to introduce the documents at trial, will be in a position to testify to the fact that the "The Shops at Willow Bend Artwork" consists of those two graphics. Mishkoff is entitled to have such persons identified so that they can be questioned in discovery, rather than having Taubman's counsel find out who they are only after discovery has expired.

The assignment reveals another problem. The assignment was notarized on February 22, 2002. However, Taubman submitted its registration document to the Registrar of Copyright on February 20, 2002, and the copyright was registered on February 21, 2002. The registration document includes a statement, signed under penalty of punishment for making false statements, asserting that it already owned the copyright by virtue of an assignment. It is fair to infer that there must be documents antedating the assignment that has been provided here, and Mishkoff is entitled to see them.

If, on the other hand, Taubman intends to assert that the registration's claim of an existing assignment is false, Mishkoff will want to investigate another assertion in the registration – that JPRA owned the copyright originally because it was made as a work for hire. Obviously, if it was not a work for hire, JPRA did not own the copyright and could not transfer it. Yet Taubman has not provided any evidence demonstrating that the two graphics were created as a work for hire. If Taubman has such evidence, it must be provided.

The opposition, at page 2, also indicated that plaintiff Taubman does not have any such information; however, in light of the fact that the Interrogatory answers indicate that Taubman's outside counsel did not talk to anybody at the company in attempting to answer Mishkoff's discovery requests, we question how counsel can be so sure that none of Taubman's staff have any information bearing on this question. Indeed, the opposition indicates that Taubman reserves the right to present witnesses from JPRA on this issue, id. 2, and suggests that Taubman will wait until after discovery expires to obtain this information from its contractor, JPRA, in preparation for trial. TaubOpp. 2. Mishkoff is entitled to have the persons with knowledge identified in advance so that they can be deposed, rather than facing trial by ambush.

As for the remaining interrogatories, Taubman has completely ducked interrogatories directed at the fair use factors. The leading case in the Sixth Circuit on the defense of fair use is Princeton University Press v. Michigan Document Service, 99 F.3d 1381 (6th Cir. 1996) (en banc). There, the Court pointed to the four factors set forth in section 107:

  1. the purpose and character of defendant's use, including its status as commercial or non-profit educational use;

  2. the nature of the copyrighted work (whether it is factual or creative);

  3. the fraction of the whole copyrighted work that was used; and

  4. the effect on the market for or value of the copyrighted work.

The Michigan Document court stressed that the last factor is the most important. Id. 1385.

Tracking the statute and the Michigan Document analysis, almost every one of the interrogatories and requests to produce sought information bearing on one or more of the four statutory fair use factors. Thus, Document Request Nos. 2, 3, 4, 5, 6, and 7, and Interrogatory Nos. 2, 3, 4, 5, 6, and 7 were directed at least in part to exploring the third fair use factor, the fraction of the whole copyrighted work that was used (Interrogatory and Document Request No. 1 may also elicit some information on this topic). Although Taubman has chosen to provide only the registration document for the two specific graphics that Mishkoff copied, Mishkoff is entitled to identify the entire copyrighted work of which those two graphics are a part, to determine whether he can argue that he copied only a fraction of the whole work, and, if so, how small a fraction. At this early stage of the case, Mishkoff cannot be sure what the "whole" is – that is to say, of within what entire body of work Mishkoff may wish to argue for the inclusion of the two graphics. Therefore, the discovery sought (a) the entirety of the works used to promote The Shops at Willow Bend, plus any other materials (even if not copyrighted) that were transmitted along with the copyrighted matter; (b) all other materials pertaining to The Shops at Willow Bend that have been copyrighted, and (c) the entirety of the works authored for Taubman by JPRA and Associates (the creators of the two graphics in question), including but not limited to the works authored specifically for The Shops at Willow Bend.

In this regard, the discovery requests are not limited to items that Taubman has registered. Mishkoff will argue that a copyright owner cannot manipulate the fair use test by waiting until after its works have been copied and then registering only the copied works. Moreover, as Taubman has repeatedly reminded the Court in the context of other motions, the copyright comes into existence when the work is created, and not simply when it is registered; and the third fair use factor is based on the portion of the copyrighted work that is used, not just the portion of the registered work that is used.

In its opposition, at 2-3, Taubman draws the following analogy: Suppose, says Taubman, that Mishkoff copied an entire book written by J.D. Salinger; he could not claim fair use by arguing that he did not copy other books also written by Salinger. The analogy is a false one, because Mishkoff is seeking only related work by JPRA for Taubman, not comparable to asking for a completely different book. But the analogy can be revised to present a situation that is comparable to this case. Thus, suppose that Mishkoff reprinted material from two separate pages of a Salinger book in a book review, or that he placed two excerpts from the book on his web page in the course of telling Internet users what a wonderful book Salinger had written, and urging them to go read the book themselves. If he copied only two short excerpts of the book, the fact that it was just a small part of the book would be a strong argument in favor of his fair use defense. Suppose, however, that Salinger had not registered any copyright in his book, but, after the book review had been published, he deliberately registered his copyrighted only in the two excerpts that had been copied – would the reviewer's fair use defense fail on the ground that he had copied "the entire copyrighted work"? We think not. The reviewer would be entitled to compare the small amount copied to the entire work.

Similarly, here, Mishkoff is seeking discovery to identify the "entire copyrighted work," precisely for the purpose of preventing the plaintiff from manipulating this factor of the test for fair use by selecting only the copied portions for after-the-fact registration. Taubman's objections to interrogatories imply that JPRA has authored a large quantity of material to promote Taubman's malls, including The Shops at Willow Bend. Mishkoff wants to identify the entire work in order to advance his fair use defense.

Interrogatories Nos. 4, 6, 7, 9, 10, and 11, and Requests to Produce Nos. 4, 6, 7, 9, 10, and 11 are directed to the fourth factor, the impact of defendant's copying on the market for and value of the works in question. The Supreme Court and the en banc Sixth Circuit have described the fourth factor as by far the most important aspect of the test for fair use. Harper & Row Pub. v. Nation Enterprises, 471 U.S. 539, 566 (1985); Michigan Document, 99 F.3d at 1385. Interrogatories and Requests 9 through 11 attack the fourth factor directly. No. 9 asks Taubman to explain what the market for the works in question is and to provide the evidentiary basis for that position; Nos. 10 and 11 ask for the evidentiary basis of any impact that Taubman contends Mishkoff's copying has had on the market of the value of the work in question. These discovery requests are of central relevance to the test for fair use.

Following the discovery conference, Taubman amended its responses to Interrogatories Nos. 9, 10, and 11 to include the statement "plaintiff does not know." (Contrary to the assertion on page 3 of its opposition, Exhibit E to the opposition does not contain any further supplementation on this issue; moreover, the question is not the dollar amount of the market value, but what the market is, and what impact Mishkoff's use had on that market). Given the central importance to the fair use analysis of "effect on the market" or "effect on value," this sort of response, which postpones until trial the identification of plaintiff's position on what the market for the copied items is, and the evidence showing how Mishkoff's copying adversely affected that market or value, is completely evasive. Taubman should be compelled either to acknowledge the absence of any effect on market or value, or provide its evidence showing that such an effect existed.

Interrogatories and Requests 4, 6 and 7 attack the fourth factor indirectly. Mishkoff believes that Taubman made extensive efforts to publicize The Shops at Willow Bend, and that it used the works that Mishkoff copied for that purpose. Mishkoff further believes that Taubman urged recipients of these materials to make copies of the works that it was disseminating, including the works in question, and indeed to publish them further. For example, the official Taubman web page at www.taubman.com contained a page that urged viewers to "download" a document containing one of the graphics at issue in this case. If the discovery that Mishkoff seeks proves those points, Mishkoff will argue that his use of the works in question was consistent with the purposes for which Taubman made its publicity efforts, thus undercutting any claim that Mishkoff's use detracted from either the market for the works or the value of the works. Such evidence would strongly support Mishkoff's fair use claims in this case. The evidence sought would also tend to identify the persons who were responsible for and involved in the marketing program, thus identifying potential deponents.

Taubman's assertion, at TaubOpp. page 3 point 6, asserts that plaintiff's use of the works is irrelevant to the case, is inconsistent with the judicial analysis of the fourth factor, which focuses attention on the impact defendant's use had on the plaintiff's intended uses of the work. The finder of fact will not be able to make that determination until it knows what plaintiff's intended use was. Mishkoff is entitled to have plaintiff explain what its intended uses were, and he is also entitled to have plaintiff identify the persons who know its intended uses so that he can take their depositions. Taubman's evasive answers should not be tolerated.

A number of courts have analyzed the plaintiff's use as well as the defendant's and then relied on a practical analysis of the positive effects that the defendant's use may have on the plaintiff's use as supporting the defense of fair use. E.g., NRA v. Handgun Control, 15 F.3d 559, 562 (6th Cir. 1994); Hustler Magazine v. Moral Majority, 606 F. Supp. 1526, 1539 (C.D. Cal. 1985). Both of these cases are particularly instructive because they involved plaintiffs who were attempting to use the copyright laws as a basis for suing groups to which the plaintiffs were otherwise hostile, seizing on the groups' use of a copyrighted document and claiming harms which, in the cold light of day, were illusory. So, here, Mishkoff intends to argue that the entire purpose for the graphics was to increase public interest in Taubman's mall, and that his use of the graphics on a web site that praised the mall was consistent with that purpose. Mishkoff is entitled to examine documents showing how plaintiff used the graphics, and what its staff members said to each other and to outsiders about the graphics, to build that case.

The heading for point 6 on page 3 of Taubman's opposition contains an unsworn factual assertion that "there was no invitation to copy the[] works." From the investigation that counsel has been able to conduct, we believe that this assertion is false. For example, the official Taubman web page at www.taubman.com contained a page that urged viewers to "download" a document containing one of the graphics at issue in this case, specifically, the portrayal of the main court of the mall. Moreover, a version of the other work at issue, the map of the mall, has been published elsewhere, and the publisher has indicated that, although it did not retain records showing its source for the image, it believed or assumed that the image was provided to the publisher in a Taubman press kit. Obviously, if Taubman disseminated press kits urging that the graphics be published to help it tell viewers of those publications about the mall, that would support Mishkoff's argument that his use of the graphics was entirely consistent with their intended use. Such press kits, assuming they existed, would be among the documents described by Mishkoff's discovery requests.

Interrogatories 2 through 7, and Document Requests 2 through 7, also relate to the second factor, the nature of plaintiff's work. Mishkoff believes that the works in question are essentially factual – they were not intended to be seen by their viewers as works of art, but simply as a factual portrayal of the layout of the mall and the expected appearance of its main court. The transmissions and the nature of other materials produced may well reflect that both plaintiff and its designer had this intention and this perception, thus supporting Mishkoff's fair use defense. Although plaintiff flatly denies that the drawing is "factual," TaubOpp. 5 point 7 (presumably plaintiff admits that the map is factual) Mishkoff is entitled to examine the transmission documents and other materials that may reveal a contrary characterization on the part of Taubman's or JPRA's own staff or agents, or a contrary perception on the part of the recipients of the documents.

Interrogatory No. 15 asks for a detailed statement of the facts on which Taubman's denial of fair use will be based. The answer is replete with generalities, such as "effectively normal commercial exploitation" and "not satisfy any test of fair use"; it does not include any facts. Moreover, the mere fact that a use is "commercial" does not "exempt" it from consideration of the other fair use factors; the issue of commercial use is not even the most important factor. In the Michigan Document case, for example, the en banc Sixth Circuit found that the main relevance of the distinction between "commercial" and "noncommercial" use was that its disposition governs the burden of proof on the "effect on the market" part of the test. 99 F.3d 1385-1386. Despite finding that the defendant's use in that case was commercial, the court proceeded to consider the remaining factors in the test, id. 1386-1389, and reiterated that the issue of market effect is "the most important." Id. 1385. Thus, the assertion that Mishkoff's use is commercial – even if it were supported by a detailed statement of facts – would not justify refusing to enumerate the factual bases for the other factors.

Interrogatory No. 15 also asks for identifying information concerning the persons who know the facts relating the fair use defense, and the documents or other evidence relating to that defense. Taubman's response fails to identify specific individuals with knowledge whom Mishkoff could then depose. Instead, Taubman simply says that persons on whose knowledge it will rely are "representatives of Plaintiff" and "representatives from retail stores." Mishkoff was entitled to names, addresses and telephone numbers of such individuals so that he could schedule depositions to follow up the detailed answers to interrogatories and requests to produce that Taubman was obliged to supply.

Similarly, in response to Interrogatory No. 17, Mishkoff is entitled to names and other requested information instead of just being given a category of person, such as "representative of JPRA" or "representative of Plaintiff with knowledge." In the pre-motion discovery conference, Taubman's counsel identified its in-house counsel, Mr. Charlip, as one of its representatives, but failed to provide similar information with respect to JPRA. And, although Mishkoff may very well wish to depose Mr. Charlip, he does not want to take the deposition until fully responsive discovery responses have been provided, including information identifying lower level personnel and persons from JPRA and other entities who may provide information that would be useful in the Charlip deposition.

Finally, typical of Taubman's cavalier answers to Mishkoff's discovery requests is the acknowledgment in response to Interrogatory No. 16 that, in responding to the interrogatories, Taubman's trial counsel did not obtain information or documents from even a single person other than herself. The proper response to interrogatories and requests to produce requires counsel to review the documents that are described by the requests and determine whether they are subject to production.

At the very least, therefore, the Court is requested to order Taubman to provide fully responsive answers to Mishkoff's interrogatories and requests to produce. Taubman should be required to provide such answers, and send all documents being produced to defendant's counsel, within fifteen days of the Court's order.

[Note: When responding to interrogatories and requests to produce on the trademark issues, plaintiff's discovery responses stated that certain documents "will be produced." Defendant was then required to send repeated reminders of this commitment and repeated requests for actual production; and the documents were not actually sent until one month later. If the case is to proceed on the schedule that defendant is suggesting, such procrastination cannot be acceptable.]

Mishkoff should then be allowed forty-five days thereafter to take depositions, but only in pursuit of those answers.


The motion to compel further discovery should be granted.

Respectfully submitted,

    Barbara Harvey (P25478)
    Suite 3060
    Penobscot Building
    645 Griswold
    Detroit, Michigan 48226
    (313) 963-3570

    Paul Alan Levy (DC Bar 946400)
    Public Citizen Litigation Group
    1600 - 20th Street, N.W.
    Washington, D.C. 20009
    (202) 588-1000

    Attorneys for Defendants

June 25, 2002

Next: Taubman Moves for Summary Judgment (Copyright)

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