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Act 96: The Discovery Hearing

As I did not attend the Discovery Hearing on July 25, 2002 (Paul Levy, my attorney, represented me), I'm afraid that I don't have much to report.

From what I've been told, I probably would not have much to report even if I had been there. My understanding is that the judge mostly listened, allowing both sides to present their positions. Although I don't know exactly when he'll issue his ruling, I suspect that it'll be within a couple of weeks.

At the Discovery Hearing, Julie Greenberg (Taubman's attorney) referenced a "new" case (one that she had not cited in any of her briefs) without providing my attorney a copy prior to the hearing. And so, on July 26, 2002, the day after the hearing, my attorney responded to the new citation by sending the following letter to the judge.

July 26, 2002

Dear Judge Komives:

I write in response to the Court's invitation to address the slip opinion cited by Ms. Greenberg at the discovery hearing yesterday morning. Chirco v. Hampton Ridge, Civ. No. 01 CV 72015 (July 5, 2002). That ruling addresses an issue not currently before the Court - whether a defendant who has been sued by two copyright licensees has standing to enforce the requirement in 17 U.S.C. ¶ 204(a) that a transfer of the ownership of a copyright must be in writing. Id. at 4-5. Here, the issues at which Interrogatory and Request to Produce No. 1 are directed include whether the particular graphics at issue have been assigned to Taubman, whether the requirements for work for hire have been met, and whether the registration certificate's assertion, that Taubman already owned the copyright through assignment at the time of registration, was false.

Most important, Chirco was not a discovery ruling, addressing the defendant's right to obtain discovery concerning the assignment and the accompanying communications; rather, the ruling denied a motion for summary judgment, on a record that revealed that the copyright owner and the licensees were in complete agreement that the licensee would have the right to sue on the copyright. Indeed, after the issue was raised in Chirco, the opinion reflects that the plaintiff went back to the copyright owner and secured an addendum to the license agreement to specify that the plaintiffs would have the right to sue in addition to all of the other rights that they enjoyed under the license agreement.

Here, of course, there is nothing in the record demonstrating that the two graphics at issue are the ones that were covered by the assignment, or that JPRA is in agreement with Taubman pertaining to the status of these two graphics. That is one of the issues on which Mishkoff is attempting to take discovery. Interrogatory No. 1 (and its companion Document Request No. 1) asked for all evidence and communications supporting the claim of ownership. Ms. Greenberg represented that certain communications had been made; now, her client needs to produce the specific information that will support her representations. For example, it needs to identify the dates and parties to the alleged communications and similar data as defined by the word "identify" in the interrogatories; it should also produce any evidence bearing on the issue of ownership, including any evidence of oral agreements. Mishkoff will then have the opportunity to use deposition subpoenas, if appropriate, to follow up on the answers to written discovery.

Indeed, yesterday's argument was the first time that plaintiff gave JPRA Architects as the name and address of the original owner and alleged assignor of the copyrights at issue; previously, plaintiff's papers consistently used the name JPRA and Associates. Although plaintiff has not yet identified the person who signed the assignment, defendant is at least able at this time to locate JPRA Architects for service of a deposition subpoena, assuming of course that discovery is reopened. As indicated in court yesterday, however, defendant wishes to obtain all of Taubman's own information before beginning such third-party depositions.

Respectfully yours,
Paul Alan Levy

A few days later, Ms. Greenberg sent the judge this response to our letter.

July 29, 2002

Dear Judge Komives:

This letter responds to Attorney Paul Levy's correspondence on July 26, 2002, requested by the Court at the hearing of July 25, 2002.

At issue at the hearing was various information requested by Defendant to assist him in his intended defense that there are alleged insufficiencies in the written assignment, such as, for example, the missing word "the" in the written assignment, as well an alleged discrepancy between the date of notarization and the date of registration. This formed the basis, in part, of his request for a court order compelling additional discovery responses.

Plaintiff objected to this line of inquiry, noting in its brief the well established rule in copyright law that an infringement defendant has no standing to attack the written assignment as a defense. In his pre-hearing brief, Defendant stated that "there is, therefore, no occasion for this Court to decide whether the Sixth Circuit would follow the line of authority cited by Taubman." See Defendant's Reply Brief at p.2.

At the hearing before this Court, Defendant was presented with a recent opinion of Magistrate Morgan on just this issue, holding expressly that an infringement defendant has no standing to attack the sufficiency of the written assignment. When asked by this Court to comment about this decision in writing, Defendant stated in his July 26, 2002 letter that "the ruling addresses an issue not currently before the Court."

Plaintiff submits that the referenced decision is squarely on point, and supports Plaintiff's position that additional discovery on the irrelevant inquiry of technicalities of the written assignment should not be permitted.

To sum up the pending discovery issues as they were addressed in Court, Plaintiff states the following:

  • All documents known to establish Plaintiff's ownership in the copyright have been produced. They include the written assignment and the copyright registration. No other documents are known.

  • In timely responses to discovery requests, Plaintiff produced the full name and address of the author/assignor JPRA Associates at least as early as May 22, 2002, well within the discovery period. The document containing this information was admitted to have been received by Defendant's counsel. Defendant through his counsel (contrary to statements made by Defendant's counsel at the hearing, Defendant was not pro se during the copyright discovery) made no attempt to take any depositions during the discovery period, including making any attempt to discern what he now claims was an address he could not read. Having chosen not to take any depositions during the eight weeks of discovery earmarked exclusively for the copyright issues, the untimely request should be denied.

In view of the above, it is Plaintiff's respectful position that Defendant has failed to identify any outstanding information which should be produced. Accordingly, the motion to compel should be denied.

Very truly yours,
Julie A. Greenberg

View the Original Letter (in a separate window)

And finally (?), on the following day, my attorney sent the judge this reply to Ms. Greenberg's response.

July 30, 2002

Dear Judge Komives:

I write in reply to Ms. Greenberg's letter dated July 29.

In my reply brief. I argued that the Court had no reason to reach the question of whether to apply the rule, adopted elsewhere, under which a third-party user lacks standing to question the adequacy of a written assignment when the record reveals that the original copyright holder and the assignee are in agreement that the copyright has been assigned. That point remains valid, unaffected by the Chirco case which applied that rule in this district in the related context of defining the rights of a copyright licensee, because Taubman has introduced no evidence of oral agreements or other indications of JPRA agreement with respect to the two graphics at issue. The standing point can be decided only after Mishkoff has had the opportunity to obtain discovery of the oral communications about which Ms. Greenberg made representations at the hearing, and any other evidence that may exist. Because the issue on this motion is discovery about whether such agreement exists, not summary judgment when the agreement has been shown, the issue in Chirco is not currently before the Court.

Ms. Greenberg's assertion that she does not know of any other "documents" on ownership does not avoid the need for further answers, both because her representations about oral agreements make clear that there is information to be produced, and because she has acknowledged that, in answering the written discovery requests, she did not question anybody at the company about what information or documents they had.

As for the timing of the disclosure of JPRA 's location, the sending of the assignment only six business days before the close of discovery would not have been sufficient to allow Rule 30(b)(6) a deposition to be taken, even if the handwritten address had been legible, which it was not. Although it is true that no depositions were taken during the copyright discovery period, that is because defendant sought written answers and documents before taking depositions, and then promptly moved to compel when such answers were not forthcoming. There was no cause to take depositions on the copyright issue during the discovery period on the original trademark issues (when, as indicated at the hearing, Mishkoff was pro se), because the copyright claim was not added until after discovery closed.

Finally, the exchange between counsel relates exclusively to Interrogatory and Request to Produce No. 1, on the issue of ownership; the discovery requests on the issue of fair use remain as well. No further information has yet been produced in that regard.

Respectfully yours,
Paul Alan Levy

Next: The Discovery Order

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