Opinion
Case No. 00-CV-74841-DT
June 20, 2002
Table of Contents
I. OPINION 2 A. Procedural History 2 B. Plaintiff's Notice of Objection to and Request for Exclusion of Improper Rebuttal Evidence 3 C. Applicable Law 5 1. Standard of review for summary judgment 5 2. Copyright infringement claim 7 3. Independent creation defense 8 D. Analysis 8 1. Whether the material to which plaintiff objects is proper rebuttal evidence 7 8 2. Whether the five declarants' alleged financial interest in this case affects the admissibility of their declarations? 11 3. Whether plaintiff's should be permitted to telephonically depose the declarants 12 4. Whether Local Rule 7.1 applies to the instant notice? 13 II. ORDER 14I. OPINION
A. Procedural HistoryOn November 2, 2000, plaintiff filed its complaint and jury demand. (Doc. Ent. 1). Plaintiff alleges copyright infringement by defendant in violation of 17 U.S.C. § 101, et seq. Plaintiff asserts that its "Witch Crash" and "Witch Smash" patterns are works containing original material which is copyrightable subject matter. Compl. at ¶¶ 12-13. Plaintiff's complaint alleges that defendant "has reproduced, distributed, promoted, sold, and offered for sale illegal and unauthorized copies, including derivative works, of the "Witch Crash" and/or "Witch Smash works and thus has infringed [plaintiff's] copyright(s) in and relating to the copied works." Compl. at ¶ 14. Defendant filed its answer and affirmative defenses on February 20, 2001. (Doc. Ent. 8).
On June 13, 2001, the Winfield Collection, Ltd. filed another lawsuit naming, among others, LTD Commodities, Inc. and Taylor Gifts, Inc. (alleged customers of Sun Hill). See Winfield Collection, Ltd. v. Meredith Corporation, et al. [Case No. 01-CV-40157-FL]. According to the docket sheet, the only remaining defendants in the Flint case are Meredith Corporation and Lillian Vernon Corporation.
The named defendants included Meredith Corporation; McCall Pattern Company; Taylor Gifts, Inc.; LTD Commodities, Inc.; New Creative Enterprises, Inc.; Potpourri Collection, Inc.; Lillian Vernon Corporation; Fun World Division; and Impact Plastics, Inc.
On August 1, 2001, defendant filed a motion to amend its answer in the instant case to include counterclaims. (Doc. Ent. 27). On November 14, 2001, Judge Woods granted in part and denied in part defendant's motion. (Doc. Ent. 56). On November 30, 2001, plaintiff filed a conditional motion for summary judgment on Sun Hill's tortious interference counterclaim. (Doc. Ent. 60). Defendant filed a counterclaim of tortious interference with jury demand on December 7, 2001. (Doc. Ent. 69).
On December 26, 2001, defendant filed a response to plaintiff's conditional motion. (Doc. Ent. 79). The exhibits to this response included excerpts of the deposition transcript of William Zilliox (Sun Hill's CEO); the declaration of Michael Hori (VP Merchandising at LTD Commodities, Inc.); and the declaration of Mark F. Wils (Director of Purchasing and Operations for Taylor Gifts, Inc.). On January 11, 2002, plaintiff filed a reply to defendant's response. (Doc. Ent. 86). On the same day, it filed a motion to strike the Zilliox deposition and the Hori and Wils declarations from the evidentiary record. (Doc. Ent. 84). On May 2, 2002, I filed an opinion and order denying plaintiff's motion to strike. (Doc. Ent. 106). Plaintiff's conditional motion for summary judgment is currently before Judge Woods.
B. Plaintiff's Notice of Objection to and Request for Exclusion of Improper Rebuttal Evidence
On November 30, 2001, defendant filed motions for summary judgment as to the invalidity of copyright registration nos. VA 781-855 and VA 949-025 claim; the non-infringement of copyright registration no. VA 781-855 claim; the independent creation claim; and a partial motion for summary judgment of the non-infringement of copyright registration no. VA 949-025 claim. (Doc. Entries 62-65). These motions are currently before Judge Woods.
On December 26, 2001, plaintiff filed responses to these motions. (Doc. Entries 75-78). On January 22, 2002, defendant filed replies to these responses. (Doc. Entries 88-91).
On January 25, 2002, plaintiff filed a notice of objection to and request for exclusion of improper rebuttal evidence submitted by defendant in its reply briefs. (Doc. Ent. 92 [Not.]). Specifically, plaintiff objects to the inclusion of the declarations of Nancy Mimoun; Benson Zinbarg; Barry Y. Piels; Mike Kilcran; and Kyle McDarren, and the excerpts of the depositions of Becky Wakeman; Daniel Lee Waltz; Kenneth Meyer; and Erik Naugle. Not. at 1. Plaintiff's bases for objection are that "none of [this] evidence is true rebuttal evidence[,]" and "all of the declarants have a financial interest in the case." Id. at 1, 2. Plaintiff alternatively requests that, if the Court denies its objections, it be permitted to respond to the new evidence and conduct brief telephonic depositions of the declarants. Id. at 3 n. 2. On the same day, plaintiff filed Exhibit B to its notice under seal. (Doc. Ent. 93).
On January 31, 2002, Judge Woods referred this notice to me for hearing and determination. (Doc. Ent. 96).
On February 11, 2002, defendant filed a response to plaintiff's objection. (Doc. Ent. 98 [Rsp.]). Defendant argues that "plaintiff's new allegations in its briefs in opposition necessitate new declarations and recitations to existing deposition transcripts — thus the evidence is proper[;]" "contrary to plaintiff's unsupported allegations, Sun Hill's declarants do not have a financial interest in this case[;]" and "plaintiff failed to comply with Local Rule 7.1, therefore, the notice should be stricken[.]" Rsp. at ii.
On February 20, 2002, plaintiff filed a reply to defendant's response. (Doc. Ent. 101 [Rpl.]). It argues that the material to which it objects is "within the four corners of [defendant's] opening summary judgment motion papers." Rpl. at 1. Furthermore, plaintiff argues that it has no procedural opportunity to discredit the material to which it objects, and this prejudice is not addressed by Local Rule 7.1. Rpl. at 2.
I held a hearing on plaintiff's objections on February 25, 2002.
The parties were represented by attorneys Robert C. Tittle and Douglas P. LaLone.
C. Applicable Law
1. Standard of review for summary judgment
Before the Court are several motions for summary judgment. Summary judgment, pursuant to Fed.R.Civ.P. 56, may be granted "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c).
A fact is 'material' and precludes grant of summary judgment if proof of that fact would have [the] effect of establishing or refuting one of [the] essential elements of a cause of action or defense asserted by the parties, and would necessarily affect [the] application of appropriate principle[s] of law to the rights and obligations of the parties.Kendall v. Hoover Co., 751 F.2d 171, 174 (6th Cir. 1984) (quoting BLACK'S LAW DICTIONARY 881 (6th ed. 1979)). "In evaluating a motion for summary judgment we view all evidence in the light most favorable to Plaintiff . . . and assess the proof to determine whether there is a genuine need for trial." Gantt v. Wilson Sporting Goods Co., 143 F.3d 1042, 1045 (6th Cir. 1998) (citations omitted).
The Sixth Circuit cited both Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986) and Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) in support of this statement.
The movant bears the burden of demonstrating the absence of all genuine issues of material fact. See Gregg v. Allen-Bradley Co., 801 F.2d 859, 861 (6th Cir. 1986). The moving party need not produce evidence showing the absence of a genuine issue of material fact. Rather, "the burden on the moving party may be discharged by 'showing' — that is, pointing out to the district court — that there is an absence of evidence to support the non-moving party's case." Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986). Once the moving party discharges that burden, the burden shifts to the non-moving party to set forth specific facts showing a genuine triable issue. Fed.R.Civ.P. 56(e); Gregg, 801 F.2d at 861.
"Supporting and opposing affidavits shall be made on personal knowledge, shall set forth such facts as would be admissible in evidence, and shall show affirmatively that the affiant is competent to testify to the matters stated therein." Fed.R.Civ.P. 56(e). See also Hamilton v. Roberts, No. 97-1696, 1998 WL 639158, *5 (6th Cir. Sept. 10, 1998) (unpublished) (personal knowledge required); Daniel v. Cox, No. 96-5283, 1997 WL 234615, *2 (6th Cir. May 6, 1997) (unpublished) (conclusory assertions are insufficient for purposes of surviving summary judgment); Wiley v. United States, 20 F.3d 222, 226 (6th Cir. 1994) (citing Daily Press, Inc. v. United Press Int'l, 412 F.2d 126, 133 (6th Cir. 1969)) (cannot consider hearsay evidence).
"Demonstration of simply 'metaphysical doubt as to the material facts' is insufficient." Kand Medical, Inc. v. Freund Medical Products, Inc., 963 F.2d 125, 127 (6th Cir. 1992) (citing Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986)). As the United States Supreme Court stated in Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986): "There is no issue for trial unless there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party. If the [non-movant's] evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-250 (citations omitted); see Celotex Corp., 477 U.S. at 322-23; Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586-587 (1986). The standard for summary judgment mirrors the standard for a directed verdict under Fed.R.Civ.P. 50(a). Anderson, 477 U.S. at 250. Consequently, a non-movant must do more than raise some doubt as to the existence of a fact; the non-movant must produce evidence that would be sufficient to require submission to the jury of the dispute over the fact.
2. Copyright infringement claim
"To establish [copyright] infringement, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publications, Inc. v. Rural Telephone Service Company, Inc., 499 U.S. 340, 361 (1991) (citing Harper Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 548 (1985)).
"Direct evidence of copying is rare, so frequently the plaintiff will attempt to establish an inference of copying by showing (1) access to the allegedly-infringed work by the defendant(s) and (2) a substantial similarity between the two works at issue." Ellis v. Diffie, 177 F.3d 503, 506 (6th Cir. 1999) (citing Robert R. Jones Assocs., Inc. v. Nino Homes, 858 F.2d 274, 276-77 (6th Cir. 1988); Wickham v. Knoxville Int'l Energy Exposition, Inc., 739 F.2d 1094, 1097 (6th Cir. 1984)). "[T]he 'ordinary observer' test . . . is the traditional standard of copyright infringement." Ellis, 177 F.3d at 506 (citing Black v. Gosdin, 740 F. Supp. 1288, 1292 (M.D. Tenn. 1990); Flag Fables, Inc. v. Jean Ann's Country Flags Crafts, Inc., 730 F. Supp. 1165, 1172 (D. Mass. 1989)).
The burden of proof in a copyright infringement claim is upon plaintiff. Gamma Audio Video, Inc. v. Ean-Chea, 11 F.3d 1106, 1114 (1st Cir. 1993); Motta v. Samuel Weiser, Inc., 768 F.2d 481, 484 (1st Cir. 1985); Hayden v. Chalfant Press, Inc., 281 F.2d 543, 548 (9th Cir. 1960); Overman v. Loesser, 205 F.2d 521, 523 (9th Cir. 1953) ("The burden of proof, i.e., the risk of non-persuasion, remains on the plaintiff throughout the presentation of the case, unless it is declared to be elsewhere by statute or practice.").
3. Independent creation defense
"[A]n inference of copying is rebuttable by evidence of independent creation of the allegedly infringing work." Ellis v. Diffie, 177 F.3d 503, 507 (6th Cir. 1999). As to a claim of copyright infringement, the affirmative defense of independent creation is successfully asserted with uncontroverted evidence. Kienzle v. Capital Cities/American Broadcasting Company, Inc., 774 F. Supp. 432, 436 (E.D. Mich. 1991) (citing Novak v. National Broadcasting Co., Inc., 752 F. Supp. 164, 170-171 (S.D.N.Y. 1990).
"When the similarity between two works is so striking that there is no plausible possibility of independent creation, the 'striking similarity' may dispense with the need for proof of access." Trapani v. CBS Records, Inc., No. 87-6034, 1988 WL 92438, **3 (6th Cir. 1988) (unpublished) (citing Arnstein v. Porter, 154 F.2d at 468-69; Selle v. Gibb, 741 F.2d 896, 903-904 (7th Cir. 1984). "The application of the 'striking similarity' doctrine is generally limited, however, to complex or sophisticated subject matter where independent creation would be exceptionally unlikely." Id. (citing Selle, 741 F.2d at 904).
"A showing of access by the defendant and substantial similarity between the protected and accused works, shifts the burden of production to the defendant to adduce evidence rebutting the inference of copying." Keeler Brass Company v. Continental Brass Co., 678 F. Supp. 1185 (M.D.N.C. 1987); see also Keeler Brass Company v. Continental Brass Co., 678 F. Supp. 1190, 1194 (M.D.N.C. 1988).
D. Analysis
1. Whether the material to which plaintiff objects is proper rebuttal evidence?
Plaintiff argues that the evidence to which it objects is not rebuttal evidence. (Not. at 1.). Specifically, plaintiff contends that the affidavits and deposition excerpts at issue are within the scope of the statement of facts in defendant's November 30, 2001 motion for summary judgment of independent creation (Doc. Ent. 64) and should have been submitted as part of defendant's case-in-chief. Rpl. at 2.
"Rebuttal testimony is responsive to new information by the other party." In re Air Crash Disaster, 86 F.3d 498, 528 (6th Cir. 1996). "'[E]vidence is new if, under all the facts and circumstances, . . . the evidence was not fairly and adequately presented to the trier of fact before the defendant's case-in-chief.'" Benedict v. United States, 822 F.2d 1426, 1429 (6th Cir. 1987) (citing Rodriguez v. Olin Corp., 780 F.2d 491, 496 (5th Cir. 1986). See also Benedict, 822 F.2d at 1429-1430 (6th Cir. 1987) (citing Martin v. Weaver, 666 F.2d 1013, 1020 (6th Cir. 1981)) ("Under the law in this Circuit [plaintiff's have] no duty to anticipate the government's defense or to negate in its own case-in-chief a theory that would later be raised by the government.").
The declarations at issue are those of Nancy Mimoun (dated January 17, 2002); Benson Zinbarg (dated January 18, 2002); Barry Y. Piels (dated January 15, 2002); Mike Kilcran (dated January 15, 2002); and Kyle McDarren (dated January 11, 2002). (Doc. Ent. 90 Exhibits 16-20). Also, plaintiff claims that Michael Wotton's declaration is hearsay and a "belated attempt to cure [the] lack of admissible evidence in [defendant's] moving papers." Not. at 1. The deposition excerpts at issue are those of Becky Wakeman (October 2, 2001); Daniel Lee Waltz (October 30, 2001); Kenneth Meyer (November 1, 2001); and Erik Naugle (October 30, 2001). (Doc. Ent. 90 Exhibits 21-23; Doc. Ent. 91 Ex. 12).
Michael C. Wotton made a declaration on August 24, 2001 and was deposed on October 4, 2001. (Doc. Ent. 63 Exhibits 4, 7).
As to the rebuttal evidence for the '025 non-infringement reply brief (Doc. Ent. 91), defendant claims that the declarations of Zinbarg and Mimoun were offered to rebut the allegation that defendant had access to plaintiff's catalog, Rsp. at 7; the deposition testimony of Meyer was offered to rebut the statements of plaintiff's president (Easler) that "copying is confirmed[,]" Rsp. at 8; and the declarations of Zinbarg and Piels were offered to rebut plaintiff's argument that Zinbarg admitted defendant's wooden witch was a copy of plaintiff's product, Rsp. at 8.
As to the rebuttal evidence for the '855 reply brief (Doc. Ent. 90), defendant claims that the declarations of Piels, Kilcran, and McDarren were offered to rebut the allegation that Link had access to Winfield's paper pattern, Rsp. at 9; the declarations of Piels and Mimoun and the declaration and deposition testimony of Wotton were offered to rebut plaintiff's allegation that Wotton (defendant's designer) had little to do with the original crashing witch, Rsp. at 9-10; and the declarations of Mimoun, Zinbarg, and Piels were offered to rebut plaintiff's allegation that defendant had access to plaintiff's paper patterns, Rsp. at 10.
Defendant argues that the catalog circulation sheet which suggests that Winfield's catalogs were circulated in Connecticut is unauthenticated. Rsp. at 10. A catalog circulation sheet was filed under seal. (Docket Entries 76 and 78 at Exhibits M; Docket Entries 90 and 91). These exhibits are referenced in Easler's December 24, 2001 declarations. (Doc. Entries 76 and 78 at Exhibits A, ¶¶ 8 and 9, respectively).
"If a party fails to object before the district court to the affidavits or evidentiary materials submitted by the other party in support of its position on summary judgment, any objections to the district court's consideration of such materials are deemed to have been waived, and [this Court] will review such objections only to avoid a gross miscarriage of justice." Johnson v. United States Postal Service, 64 F.3d 233, 237 (6th Cir. 1995) (citing Wiley v. United States, 20 F.3d 222, 226 (6th Cir. 1994)).
At this time, I decline to address defendant's claim. Defendant's comment was not framed as an objection to consideration of the catalog circulation sheet's but rather as a description of the material defendant attempted to rebut in its reply.
As to the rebuttal evidence for the independent creation reply brief (Doc. Ent. 89), the declarations of Piels, McDarren, Kilcran, and Mimoun were offered to rebut plaintiff's allegation that Link owns the copyright to and created defendant's witch crash product, Rsp. at 11; and the declarations of Mimoun, Zinbarg, and Piels were offered to rebut plaintiff's allegation that Wotton's declaration was uncorroborated, Rsp. at 11.
Defendant's reply to plaintiff's objections does not explain the purposes of offering the deposition testimony of Wakeman; Waltz; and Naugle. Rpl. at 7-11. However, I am persuaded by the above detail justifying the other allegedly objectionable attachments to defendant's reply. Furthermore, defendant's reply states that its explanation was an "example" of the rebuttal arguments. Rpl. at 7. Therefore, upon consideration of plaintiff's notice of objections, defendant's detailed response, and plaintiff's reply, plaintiff's objections are overruled.
2. Whether the five declarants' alleged financial interest in this case affects the admissibility of their declarations?
Plaintiff argues that Mimoun; Zinbarg; Piels; Kilcran; and McDarren, to whose declarations it objects, have a financial interest in this case. Not. at 1-2. Plaintiff claims that Zinbarg is defendant's former president and has a continuing financial interest in Sun Hill; Mimoun is his daughter who was employed by defendant; Piels is a partner of and general counsel to Link (which allegedly receives a royalty from defendant); and McDarren and Kilcran receive royalties from Link. It further alleges that defendant has not informed the Court that these declarants are "interested witnesses." Not. at 2.
Defendant claims that Zinbarg, Mimoun, Piels, Kilcran and McDarren do not have a financial interest in this case and notes that Zinbarg and Mimoun are no longer employed by defendant. Rsp. at 12. Furthermore, it argues, if the declarants had a financial interest it would go only to the weight of the evidence, not its admissibility. Rsp. at 6. Additionally, defendant asks that, if the Court finds that declarations by witnesses who are financially interested in the outcome of this case should be excluded, then plaintiff's president's three declarations supporting plaintiff's briefs in opposition to defendant's summary judgment motions should also be excluded (because Easler owns fifty percent of Winfield).
In support of its argument, plaintiff cites Wrench LLC v. Taco Bell Corp., 256 F.3d 446, 460 (6th Cir. 2001) ("the district court [Judge Quist of the Western District of Michigan] found that testimony from Taco Bell's interested witnesses on the question of independent creation, by itself, was insufficient to support summary judgment. "). However, Wrench supports defendant's argument that a party's interest in the outcome of litigation is a matter going to the weight, not the admissibility, of the evidence. Therefore, plaintiff's request to strike the excerpts of these deponents is denied.
3. Whether plaintiff's should be permitted to telephonically depose the declarants?
Plaintiff requests that, in the event the Court considers the evidence to which plaintiff objects, it be given the opportunity to respond to the evidence and to conduct brief telephonic depositions of the declarants. Not. at 3 n. 2. Defendant claims this request is unwarranted in part, because Wakeman, Waltz, Meyer, and Naugle's depositions have been taken; Piels's deposition has been taken; and plaintiff has known about Mimoun and Zinbarg since June 2001. Defendant does not oppose plaintiff's request as to Kilcran and McDarren, as long as defendant is given the opportunity to cross examine. Rsp. at 3-4.
Piels was deposed on November 30, 2001. Not. Ex. C.
Plaintiff's request is granted. The parties shall mutually agree on the dates and times of the telephonic depositions of Mimoun; Zinbarg; Piels; Kilcran; and McDarren. The scope of these brief depositions shall be limited to the subject matter within the above-described declarations.
Defendant claims that plaintiff has already deposed Piels and has had a chance to test his credibility. Rsp. at 12.
4. Whether Local Rule 7.1 applies to the instant notice?
Defendant claims that plaintiff did not comply with Local Rule 7.1(a)(1), because it did not seek concurrence before filing its notice of objections. Rsp. at 12-13. Furthermore, it questions the characterization of plaintiff's notice as a motion. Rsp. at 13.
Plaintiff claims that its oppositions to the summary judgment motions "dissected and discredited" defendant's case-in-chief and the affidavits and deposition excerpts at issue are a new set of proofs. Rpl. at 2. Plaintiff argues that it has had no procedural opportunity to discredit the material to which it objects, and that this prejudice is not addressed by Local Rule 7.1. Rpl. at 2.
Defendant's complaint does not merit any action by the Court. On February 6, 2002, the Court issued a notice of hearing on plaintiff's objections and on February 25, 2002 a hearing was held on this matter. Therefore, plaintiff's notice of objections was construed by the Court as a motion on which a hearing would be helpful. Furthermore, even though plaintiff could have filed a motion to strike, as it did on January 11, 2002 with regard to the Hori and Wils declarations, I do not find that the filing of the notice was done to avoid the concurrence requirement.
II. ORDER
In accordance with the conclusions reached in Section I.D, plaintiff's January 25, 2002 objection to and request for exclusion of improper rebuttal evidence is OVERRULED.
The attention of the parties is drawn to Fed.R.Civ.P. 72(a), which provides a period of ten days from the date of receipt of a copy of this order within which to file any written appeal to the District Judge as may be permissible under 28 U.S.C. § 636(b)(1).