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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 bare pleas of ignorance (copy of requests and responses attached).

Despite the fact that discovery on the copyright issues expires on May 31, the Court is urged to compel Taubman to respond promptly to the outstanding discovery and to postpone the scheduled trial on Count IV of the complaint only. Trial on the merits of the trademark case should not be postponed, because that would simply reward Taubman for its recalcitrance by extending the effective date of the preliminary injunction that it obtained against Mishkoff's "shops" web site. However, in the event that the Court concludes that considerations of judicial economy preclude suspension of the trial schedule for only part of the case, then the Court is urged to consider the imposition of sanctions under Rule 37(d) by declaring that Taubman's "answers" are so evasive, incomplete, and misleading as to constitute non-answers within the meaning of Rule 37(d) of the Federal Rules of Civil Procedure, and to impose appropriate sanctions under Rule 37(b)(2).


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 only 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.

There is another problem revealed by the assignment. 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.

Turning now to 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. 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, we 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, we have asked for 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; we have asked for all other materials pertaining to The Shops at Willow Bend that have been copyrighted, and 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, we have not limited the works sought to be identified 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.

Interrogatory No. 8 and Document Request No. 8 are directed to the first fair use factor. Taubman refuses to answer both items on grounds of relevance, but the statute is clear that commercial nature of the use is a factor with respect to fair use. Indeed, Taubman refuses to respond to Interrogatory No. 15, generally directed to the evidentiary basis for Taubman's position on the issue of fair use generally, on the ground that Mishkoff's commercial use makes fair use inapplicable. This argument is wrong, as discussed later in this memorandum; but given Taubman's acknowledgment that commercial use is relevant to the case, the bad faith of the refusal to answer discovery requests directed to that issue is apparent.

Responding further with respect to Interrogatory 8, Taubman recites that its "allegations regarding commercial use . . . have been fully set forth in Plaintiff's briefs." This response is inadequate for several reasons. "Commercial" use does not have the same meaning in copyright law as it does in trademark law. Indeed, the Supreme Court, as well as the Sixth Circuit in the Michigan Document case, have made clear that simply because a work is used by a commercial actor does not mean that its use is "commercial" for the purpose of the fair use analysis. Campbell v. Acuff-Rose Music, 510 U.S. 569, 584-585 (1994); Michigan Document, 99 F.3d at 1386. Nor should Mishkoff be put in the position of having to guess which parts of Taubman's trademark briefs apply to its copyright claims as well. Moreover, Mishkoff need not be content with the "allegations" contained in briefs; he is entitled to see Taubman's evidence, and thus to have Taubman identify the specific persons who have knowledge and the specific documents bearing on this issue so that the witnesses can be deposed and the documents can be examined. If Taubman intends to introduce only its briefs as evidence on the issue of commercial use, but no other documents and no witnesses, this interrogatory response might be sufficient. Otherwise, a full and detailed answer is required.

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." Given the central important of effect on the market or 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 they 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. 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 an involved in the marketing program, thus identifying potential deponents.

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.

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.

Turning now to Interrogatory No. 15, 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 plaintiffs" and "representatives from retail stores." Mishkoff was entitled to names, addresses and telephone numbers of such individuals so that he can 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 was 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 identify its in-house counsel, Mr. Charlip, as its representative, 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 have occasion to obtain information from or documents provided by 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; here, however plaintiff's counsel apparent did not obtain documents or information from anybody.

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. Because discovery on the copyright issues is due to expire on May 31, it will obviously not be possible to obtain the responses, and to pursue relevant depositions, by that date. Moreover, Taubman's dodging of discovery makes it impossible, in our judgment, to meet the deadline for dispositive motions on June 28, 2002. Nor would it be sufficient protection for Mishkoff to file an affidavit under Rule 56(f) seeking further discovery before the Court considers summary judgment on the copyright issue, for two reasons. After all, Mishkoff needs this evidence for trial as well as to oppose the motion for summary judgment that Taubman is expected to file. Moreover, once the discovery is obtained it is possible that Mishkoff will have a dispositive motion of his own to file on the issue of fair use or valid ownership of copyright. Accordingly, the current discovery dispute calls into questions the ability of the parties to be ready for trial on the copyright issues in October.

However, we urge the Court not to postpone trial on the merits of the original trademark claims in this case. Postponement of the trial on those issues would be highly prejudicial to Mishkoff because, pending trial on the merits of Taubman's trademark claims, Mishkoff is subject to a preliminary injunction barring his operation of his web site about The Shops at Willow Bend. Mishkoff's ability to operate that site should not be held hostage based on his inability to get the discovery that he needs to mount his fair use defense to the copyright claims. If the trial on the trademark issues is also postponed, Taubman will have been permitted to preserve its preliminary injunction from reconsideration on the merits by bringing a copyright claim and then ducking discovery on the issue. That tactic should not be tolerated, and Mishkoff should not be forced to choose between defending his fair use and getting a hearing on whether the preliminary injunction should be dissolved. Accordingly, the Court is requested to sever the copyright claims from the trademark claims, allowing the parties to proceed to trial on the latter (if they are not resolved by the pending cross-motions for summary judgment), while they continue the pretrial litigation of the copyright claims.

[Note: Taubman has no reason to be concerned about whether Mishkoff would, if he prevails on the trademark part of the lawsuit, place his "shops" web site back on the Internet with the two graphics. Mishkoff has already advised Taubman, in the context of discussions about Taubman's proposed motion to amend the complaint to add a copyright claim, that he does not intend to use the graphics on any of his web sites in the future. Indeed, the availability of statutory damages for use following registration of the two graphics, in the event Taubman were to prevail on a copyright claim, provides a stern deterrent to such use.]

Mishkoff acknowledges that this procedure is injurious to judicial economy, and hence proposes that, if the Court deems it inappropriate to sever the copyright count from the remainder of the complaint, then the Court is urged to consider sanctions that would allow Mishkoff to go to trial without suffering prejudice from Taubman's denial of discovery. Although the normal course is to compel answers first, rather than proceeding immediately to the imposition of sanctions, Taubman's cavalier response to discovery is nothing new. As the Court is aware from the cross-motions for summary judgment on the original three counts of the Complaint, Taubman also provided essentially non-responsive answers to Mishkoff's discovery requests pertaining to the trademark claims, ducking some questions by evasive or conclusory answers, and refusing outright to answer many others. Mishkoff was able to move for summary judgment on the trademark issues because much of the relevant evidence was in his own control, and because the questions that Taubman ducked pertained to the evidence that Taubman had in support of its own allegations; hence, it was sufficient for Mishkoff to ask the Court not to allow Taubman to rely on evidence that had been withheld during discovery.

On the issue of fair use, however, Mishkoff needs Taubman's evidence to establish important aspects of his claim, and Taubman's refusal to provide meaningful answers and responses has impeded Mishkoff's defense. The answers to the written discovery requests were needed not only for themselves, but to identify witnesses for deposition as well as further areas of inquiry.

[Note: At the same time that Taubman has refused to answer Mishkoff's discovery, earlier versions of the official web site for The Shops at Willow Bend have been removed from the Internet archive, thus impeding Mishkoff's efforts to undertake research in connection with this case without using subpoenas. Curiously, this apparently occurred after, for the first time, Mishkoff cited his research using those archives in his summary judgment papers in this case, and regrettably it was discovered after Mishkoff had served his discovery requests on the copyright issue.]

Moreover, if the Court rules that Mishkoff's use was commercial, then he will have the burden of proof on the "effect on the market" issue.

Nor is there any reason to believe that Taubman's non-responsive answers are anything other than deliberate obstruction of Mishkoff's legitimate discovery requests. This plaintiff is not pro se; it is a large national company represented by a firm of intellectual property specialists. Such lawyers could not have missed the paraphrasing or even the direct incorporation of statutory language into discovery requests seeking evidence directly relevant to the four statutory factors of the fair use test.

Accordingly, in the event the Court is not willing to grant the motion to compel because, contrary to the practice guidelines it could be not brought in time to be decided before the expiration of discovery, or in the event the Court concludes that the trademark and copyright claims should not be severed for trial purposes, Mishkoff asks the Court to rule that Taubman's evasive and incomplete discovery responses constitute a failure to respond under Rule 37(d), and either to dismiss the copyright claim outright under Rule 37(b)(2)(C), to rule that the defense of fair use has been established under Rule 37(b)(2)(A), or to refuse to allow Taubman to oppose the defense of fair use under Rule 37(b)(2)(B). This relief would be justified, even without a prior order granting a motion to compel, under the authority of Bell v. Automobile Club of Michigan, 80 F.R.D. 228, 232-233 (E.D. Mich. 1978), cited approvingly in Jackson v. Nissan Motor Co., 888 F.2d 1391, 1989 WL 128639 (6th Cir.1989) (table case; copy attached); see also Badalamenti v. Dunham's, Inc., 896 F.2d 1359, 1363 (Fed. Cir. 1990) (some courts "award sanctions under Rule 37(d) where the evasive or misleading response is tantamount to no response at all").

In the alternative, if the Court determines not to impose such sanctions, but decides to require Taubman to provide full responses to the discovery requests, while extending the time for Mishkoff to pursue depositions based on those responses, there will necessarily be a delay in the trial on the merits of the copyright claims. In that event, the Court is asked to sever the copyright claims from the remainder of the case and proceed to a trial on the merits of the trademark issues on the present schedule unless the Court grants the pending motion for summary judgment on the trademark claims.


The motion to compel further discovery and revise the schedule for disposition of the copyright claim, or, in the alternative, to impose claim-preclusion or evidence-preclusion sanctions for plaintiff's failure to respond to 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

May 24, 2002

Next: We Respond to Taubman's Discovery Requests

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