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Act 95: We Oppose Taubman's Summary Judgment Motion

Here's how we replied to Taubman's motion for summary judgment on the copyright issue.


 Civil Action No. 01-72987
 District Judge Zatkoff


Plaintiff Taubman has moved for summary judgment on its claim that defendant Henry Mishkoff infringed its copyright in two graphics that he obtained from Taubman's own web site, one a drawing depicting the grand court of The Shops at Willow Bend, and the other a map of the layout of The Shops at Willow Bend. The motion for summary judgment is not based on even a single affidavit - rather, Taubman rests entirely on the allegations in its complaint; on the registration document that asserts that certain graphics were originally owned by an entity called "JPRA and Associates," although they were authored by an unidentified individual as a work for hire, and that JPRA and Associates had allegedly assigned the work to Taubman before the registration document was executed on February 20, 2002; on the two graphics themselves, which are, assertedly, the graphics that were assigned and registered; and on excerpts from Mishkoff's responses to discovery and deposition testimony acknowledging that Mishkoff copied the works from Taubman's web site.

The principal reason why summary judgment is not warranted is that Mishkoff needs discovery in order to respond to the motion. In the alternative, summary judgment should be denied because defendant has raised sufficient issues of material fact with respect to liability and because the facts establish as a matter of law that plaintiff cannot obtain any remedy for the infringement that it alleges.

Under Rule 56(f) of the Federal Rules of Civil Procedure, summary judgment cannot be granted where the party opposing the motion can show that he needs discovery in order to establish his defenses or to pierce the plaintiff's allegations. Rule 56 requires discovery "where the nonmoving party has not had the opportunity to discover information that is essential to its opposition." Metabolife Int'l v. Wornick, 264 F.3d 832, 846 (9th Cir. 2001), quoting Anderson v. Liberty Lobby, 477 U.S. 242, 250 n.5 (1986); Vance by and through Hammons v. United States, 90 F.3d 1145, 1148-1149 (6th Cir. 1996).

As shown in the accompanying affidavit of Henry Mishkoff, Mishkoff has not had the opportunity to obtain the discovery that he needs to oppose the motion for summary judgment. The Court granted leave to amend the complaint by order dated April 4, 2002. Within days of receipt of that order, Mishkoff sent Taubman a set of interrogatories and requests to produce documents designed to support his defenses in those cases. However, rather than provide honest answers to these discovery requests, plaintiff has stonewalled, presenting relevance objections to almost every one of the discovery requests, and responding to key requests with pleas of ignorance. Taubman waited until the very last moment to provide those responses, recognizing that Mishkoff would be unable to move to compel discovery and obtain responses, and to take depositions based on such responses, until after the deadline for filing dispositive motions. Mishkoff has filed a motion to compel discovery, and that motion is pending decision before Magistrate Judge Komives. At the same time, Mishkoff moved to defer the trial on the merits (on the trademark claims as well as the copyright claims), and to reset the discovery schedule to permit the completion of necessary discovery along with new deadlines for dispositive motions. That motion has been denied pending a ruling on the discovery motion.

Mishkoff has sought discovery on two principal issues: (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.

[Note: Defendants have moved to dismiss all claims against WebFeats under Rule 17 on the ground that WebFeats is not a separate suable entity. Because Taubman has not taken issue with that aspect of the motion, this memorandum refers to Mishkoff as the defendant, in the singular tense. The motion to dismiss also argues that the Court lacks personal jurisdiction of Count IV. If that motion is granted, of course, this motion for summary judgment would have to be denied as well. However, this memorandum does not address separately the issue of personal jurisdiction.]

Next: Discovery Responses Are Needed...

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