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Act 94: We Reply to Taubman's
Opposition to Our Motion to Compel

Here's how we replied to Taubman's opposition to our motion to compel discovery.


 Civil Action No. 01-72987
 District Judge Zatkoff


Defendant Mishkoff has moved to compel the discovery he needs to oppose plaintiff's motion for summary judgment and to prepare for trial on Count IV, which alleges that Mishkoff infringed plaintiff's copyright in two graphics that were reproduced on his "shopsatwillowbend.com" web site. Plaintiff's opposition to that discovery rests on the proposition that its complaint should succeed as a matter of law. However, plaintiff's legal arguments are based on assertions of the very facts that defendant is seeking discovery to contest. The whole purpose of the discovery process is to enable opposing parties to pierce conclusory factual assertions that may be rebutted from information in a party's own files or otherwise. The discovery that Mishkoff has sought should therefore be granted.

1. Ownership Issues. Several of Mishkoff's discovery requests sought information pertaining to Taubman's claim that it owns the copyright in the two graphics at issue in this case. As Mishkoff's discovery motion observed, the written materials provided so far raise questions about whether the graphics that were assigned by JPRA and Associates, the entity that created them, were the same as the works that were registered by Taubman; about whether the works were registered before they had been assigned by JPRA and Associates; and about whether JPRA and Associates ever owned the works that it purported to assign, inasmuch as JPRA and Associates claimed ownership through the work for hire doctrine, yet there was no evidence supporting the applicability of those rules to these graphics.

Taubman's response to these requests is to argue based on a series of cases from other circuits holding that an alleged infringer has no standing to invoke the requirement of a proper written assignment "where, as here, the author and the assignee are in agreement that the transfer is valid." Opposition at 2. There are two main problems with this argument. First of all, Mishkoff has no way of knowing whether author and assignee are in agreement, because Taubman has refused to identify the person who executed the assignment, and has refused to disclose the address and phone number of JPRA and Associates, thus preventing Mishkoff from questioning it. There is, therefore, no occasion for this Court to decide whether the Sixth Circuit would follow the line of authority cited by Taubman. Nor, indeed, need the Court decide whether that line of authority extends to immunize, not only errors in the written assignment, but registration of a copyright before the assignment has been obtained in the first place (and the consequent false statements about the assignment). Moreover, Taubman did not object to plaintiff's Interrogatory No. 1 and Document Request No. 1, seeking all evidence in Taubman's possession, custody or control showing its ownership of the copyright in works produced by JPRA and Associates - instead, it purported to provide a response to the requests. Accordingly, Taubman has waived any objections that it might otherwise have had to these two requests.

Taubman takes Mishkoff to task for seeking to compel production of information about JPRA and Associates, including the evidence that Taubman may elicit at trial from the company's witnesses; Taubman argues that it was incumbent upon Mishkoff to send a subpoena to JPRA and Associates seeking that information. Opposition at 3. This argument fails for several reasons. First, plaintiff is obligated to produce the information in its possession even if that information is also in the possession of a third party. Second, plaintiff cannot wait until trial to identify its witnesses; rather, it must identify those witnesses before discovery expires so that they can be deposed. Third, defendant could not depose JPRA and Associates under Rule 30(b)(6) because plaintiff has refused to supply its address, phone number and other identifying information. Indeed, it was not until a few days before discovery expired that Taubman even produced the assignment, and the handwriting on that assignment was illegible.

2. Fraction of the Work That Was Copied. Mishkoff has sought discovery pertaining to other graphics produced by JPRA and Associates for Taubman. Taubman argues that, because it has produced the two graphics that were copied, that is sufficient. However, the fair use defense rests, in part, on the fraction of the total work that was copied. Until Mishkoff has a fair chance to develop, through discovery, evidence about what the complete work was, it will not be possible to apply that prong of the fair use defense.

Taubman persists in drawing an analogy to copying "an entire book by JD Salinger," an argument that was anticipated in the opening memorandum. Simply put, there is no way of knowing without discovery whether Taubman's analogy is sound, or, put another way, whether Mishkoff copied the entire work or a part of the work. Here, the copying was done at a time when there was no registered copyright, and it is apparent that the only reason for registering these two drawings was to permit suit to be brought against Mishkoff. For aught that appears, Taubman may simply have decided to register a small portion of the entire work so that it could argue that Mishkoff had copied the whole thing. Discovery is needed to determine what the entirety of the copyrighted matter was.

3. Market for the Work. Taubman argues that because it seeks no damages and does not know the market value of the works, no discovery is needed about "the market value" of the works. The issue is not, however, "the market value" of the works. The most important factor of the fair use defense is the impact of the alleged infringement on "the market for or value of" the work. Mishkoff is entitled to pursue discovery to determine the manner in which Taubman was using and planned to use the graphics (and similar graphics), so that he can present arguments on the merits that show that what he did with the works was not only consistent with, but furthered those uses. This discovery is of central relevance to fair use defense, and the discovery sought for those purposes should be granted. In the alternative, the Court should declare that Mishkoff prevails on this aspect of the fair use defense.

Mishkoff has also argued that Taubman appears to have urged other people to copy the graphics for the purpose of publicizing the mall. For example, Mishkoff pointed to a communication from a publication that had reproduced one of the graphics (the opening memorandum mistakenly indicated that the graphic was the map of the mall; actually, it was the drawing of the main court of the mall); according to the owner of the publication, the graphic was probably provided to the owner with a press kit, which implicitly invited copying and reproduction. The opening memorandum also pointed out that a page on Taubman's web site urges viewers to download a document including the drawing of the main court.

Pointing to an excerpt from Mishkoff's deposition, Taubman argues that it never granted permission for the copying of the works and that Mishkoff knew that it had not done so. The deposition testimony is not as clear as Taubman would have it. In context, Mishkoff was simply acknowledging that it would have been wiser to have obtained specific permission to place these two graphics on his own web site, "which I did not do on the assumption that you would not mind... ." Deposition Tr., quoted in Opposition at 5. Taubman will be entitled to present this evidence to the finder of fact in arguing that it never gave permission to copy; Mishkoff will have other evidence to present, and the communication from the publication owner suggests that such evidence exists. Mishkoff is entitled to pursue discovery to obtain it.

[Note: As for the issue of commercial use, discussed by Taubman in point 4 of its opposition, on page 4, the renewed motion to compel did not pursue that issue.]

4. Mootness. Taubman argues that this motion is moot because the discovery cutoff has passed and there will therefore be no time to take depositions pursuant to any further written answers. Although Judge Zatkoff has denied a motion to defer the trial, that denial was made "at this time," pending this Courts' ruling on this motion to compel. Moreover, Mishkoff is prepared to have trial on the trademark claims in the case deferred as well to permit the needed copyright discovery to go forward.

Respectfully submitted,

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

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

    Attorneys for Defendants

July 16, 2002

Next: We Oppose Taubman's Summary Judgment Motion

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