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A. Discovery Responses Are Needed Before Mishkoff Can Brief Taubman's Claim That It Owns the Copyright in the Two Graphics At Issue in the Case.

The only piece of evidence submitted in support of the motion for summary judgment on the issue of ownership of the copyright is three pages of documents - a registration document for a work entitled "Shops at Willow Bend Artwork," and two pages that set forth the matter that was copied. Taubman has offered no evidence establishing that the documents submitted to the Court along with the Certificate of Registration are the items that were assigned to or registered by Taubman. The registration document itself is not sworn as required by Rule 56, although the statements were made under penalty of punishment for false representations of material fact. Rather than purporting to prove the truth of the statements in the registration, Taubman relies on the general rule that a Certificate of Registration is a prima facie showing of valid copyright, shifting the burden of proof to defendant to show that Taubman does not own the copyright.

As Taubman is aware, Mishkoff has attempted to pursue discovery to determine whether there is reason to question Taubman's ownership of the copyright. To that end, Mishkoff asked Taubman to identify all documents and communications establishing Taubman's ownership of the copyright of materials authored by JPRA and Associates - the company that is identified in the copyright registration document as the original owner of the copyright. A related document request asked Taubman to produce all documents establishing its ownership of materials authored by that company. 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 and Associates was attached. In fact, the assignment was not attached to the responses, but was sent by telecopier in response to the pre-motion conference held between counsel on May 22, 2002.

Even the assignment was produced raised more questions than it answered. 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; it includes a handwritten address that is not quite legible, and the scrawled signature of the person who executed the assignment. Thus, although Taubman has argued that Mishkoff should obtain certain information by asking JPRA and Associates, Taubman deliberately withheld the identifying information that would have allowed Mishkoff to depose the relevant individuals before the discovery cutoff. Moreover, 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 also has not provided any documents establishing that the work 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 not be significant; but it might be significant because, in refusing to provide information about other documents authored by JPRA and Associates in connection with The Shops at Willow Bend, Taubman asserted that there is "much information" involved. Taubman must have documents and knowledge of oral communications that might show whether the two items over 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 has not established the relevant assignment. Mishkoff is entitled to raise questions about the validity of the copyright certificate's unsworn assertion of assignment, and summary judgment is not appropriate until after he has had a fair opportunity to pursue such discovery.

Moreover, Mishkoff has reason to believe that the two graphics in question are not the only works authored by JPRA and Associates in which Taubman owns the copyright. Taubman's web sites feature artwork relating to The Shops at Willow Bend bearing copyright notices identifying Taubman as the owner of the copyright. Given Taubman's implicit acknowledgment (in its objections to later interrogatories) that JPRA and Associates has authored extensive artwork about the mall, it is reasonable to infer that Taubman has 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 postpone any further consideration of the motion for summary judgment until after such discovery has been completed.

In opposing Mishkoff's discovery motion, Taubman advances the unsworn assertion that the assignment does, in fact, convey to Taubman the copyright in "these two items" - i.e., the two graphics over which Taubman has sued Mishkoff. Taubman Opposition 1. But there are presumably persons who know that fact, persons who, when plaintiff attempts to introduce the documents at trial, will be in a position to testify to the fact that the "The Shops at Willow Bend Artwork" consists of those two graphics. Mishkoff is entitled to have such persons identified in a timely manner so that they can be questioned in discovery.

The assignment reveals another problem. 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 that Taubman 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. Or, in the alternative, it is possible that there are no other assignments, in which case the registration was procured through false statements, which may vitiate the validity of the registration. After all, a company cannot register a copyright that it does not yet own.

Moreover, if Taubman intends to assert that the registration's claim of an existing assignment is false, Mishkoff will want to investigate the veracity of another assertion in the registration - that JPRA and Associates owned the copyright originally because it was made as a work for hire. If it was not a work for hire, JPRA and Associates did not own the copyright, and hence 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. Similarly, Mishkoff should be allowed to seek discovery from JPRA and Associates. Yet, as discussed above, Taubman withheld the identifying information that Mishkoff would need to pursue discovery from JPRA and Associates.

Taubman's opposition to Mishkoff's discovery motion, at page 2, indicated that plaintiff Taubman does not have any information establishing the applicability of the work for hire doctrine; however, in light of the fact that the Interrogatory answers indicate that Taubman's outside counsel did not talk to anybody at the company in attempting to answer Mishkoff's discovery requests, we question how counsel can be so sure that none of Taubman's staff have any information bearing on the work for hire question. Indeed, the opposition indicates that Taubman reserves the right to present witnesses from JPRA and Associates on this issue, id., and suggests that Taubman will wait until after discovery expires to obtain this information from JPRA and Associates in preparation for trial. Id. Mishkoff is entitled to have the persons with knowledge identified in advance so that they can be deposed, rather than have to face trial by ambush.

Taubman has not addressed Mishkoff's questions about copyright ownership in its opening memorandum, but presumably it will do so in a reply brief. In response to Mishkoff's discovery motion, however, Taubman argued that Mishkoff is not entitled to raise questions about the adequacy of the assignment so long as Taubman is in agreement with its assignor, JPRA and Associates, about the assignment. That argument cannot prevail at this stage of the proceedings, however, not only because there is no evidence of any such agreement, only the unsworn assertion of counsel, but also because Mishkoff has been denied the opportunity to pursue discovery into that subject. Accordingly, a ruling on the motion for summary judgment should be deferred pending that discovery.

Next: Summary Judgment Cannot Be Considered...

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