Lego A/S et al v. Best-Lock Construction Toys, Inc.
RULING (see attached). For the reasons described in the attached Ruling, Defendants' 128 Motion to Dismiss for Lack of Prosecution is DENIED and Plaintiffs' 137 Motion for Reconsideration is GRANTED. The Emergency Motion o f Best-Lock [Doc. 135] is GRANTED, to the extent that proceedings under Lego's Motion for Partial Summary Judgment [Doc. 130] are STAYED pending the additional Orders in the attached Ruling, and DENIED WITHOUT PREJUDICE in all other respects. If Best-Lock decides to refile its Rule 56(d) Motion, Best-Lock must file that motion, in a form consistent with the attached Ruling, on or before February 7, 2017. Lego may file opposing papers on or before February 21, 2017. Best-Lock may file reply papers on or before February 28, 2017. If Best-Lock does not file an additional motion, it must file its opposition to Lego's Motion for Partial Summary Judgment on or before February 7, 2017. Lego may file reply p apers on or before February 21, 2017. In these circumstances, discovery will be STAYED pending this Court's resolution of Lego's pending 130 Motion for Partial Summary Judgment. Signed by Judge Charles S. Haight, Jr. on January 18, 2017. (Kahl, A)
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF CONNECTICUT
LEGO A/S and LEGO SYSTEMS, INC.,
BEST-LOCK CONSTRUCTION TOYS,
INC., and BEST-LOCK LIMITED, HONGKONG,
BEST-LOCK CONSTRUCTION TOYS,
INC., BEST-LOCK LIMITED, HONGKONG, and BEST-LOCK GROUP
January 18, 2017
LEGO A/S and LEGO SYSTEMS, INC.,
RULING ON DEFENDANTS' MOTION TO DISMISS AND
PLAINTIFFS' MOTION TO RECONSIDER
HAIGHT, Senior District Judge:
On October 14, 2011, Plaintiffs LEGO A/S and LEGO Systems, Inc. (collectively "Lego"
or Plaintiffs) initiated this action, alleging infringement of two copyrights filed in 1994, VA 655104 and VA 655-230 (the "Minifigure Copyrights"). The Complaint, as amended on August 30,
2012, alleges that Defendants Best-Lock Construction Toys, Inc. and Best-Lock Limited, Hong
Kong (collectively "Best-Lock") infringed the Minifigure Copyrights through its actions producing
and selling similar minifigures in the United States.
Specifically, Lego asserts claims for
(1) infringement of the Minifigure Copyrights under 17 U.S.C. § 101, et seq.; (2) defamation; and
(3) violation of the Connecticut Unfair Trade Practices Act ("CUPTA"), Conn. Gen. Stat. § 42-110a,
et seq. Second Amended Complaint (Doc. 84). Lego seeks to enjoin and restrain Best-Lock from
manufacturing or selling its minifigures, and asserts claims for its "actual damages" caused by the
alleged infringement and for the award of Best-Lock's profits generated thereby. Id. at 10-11.
For its part, Best-Lock has asserted several affirmative defenses and Counterclaims claiming,
inter alia, that (1) the Minifigure Copyrights are invalid and unenforceable; (2) Best-Lock is entitled
to a declaratory judgment that the sale of Best-Lock's minifigures does not infringe on the
Minifigure Copyrights; and (3) Best-Lock is entitled to an injunction requiring Lego to consent to
the importation and delivery of Best-Lock's goods in the United States. Best-Lock Answer (Doc.
86). Best-Lock also added Best-Lock Group Limited as a Counterclaim Plaintiff. Id. ¶ 87.
The Court has previously decided several motions and disputes between the parties.
Familiarity with those earlier rulings is assumed. The Court denied motions for preliminary and
permanent injunctions sought by both parties, without prejudice to renewal after discovery and after
assessing the need for a further evidentiary hearing. 874 F. Supp. 2d 75 (D. Conn. 2012) ("Lego I").
The Court subsequently granted Lego's motion to join Best-Lock Hong Kong as a Defendant, but
denied Lego's motion to add Torsten Geller as a Defendant. 886 F. Supp. 2d 65 (D. Conn. 2012)
("Lego II"). Thereafter, the Court settled a dispute between the parties regarding the terms of a
Protective Order governing the action, 2012 WL 6156129 (D. Conn. Dec. 11, 2012) ("Lego III"),
a ruling the Court subsequently declined to reconsider, 2013 WL 1611462 (D. Conn. April 15, 2013)
Prior Court orders had considered and adjudicated the proper conduct of mutual pretrial
discovery, which gave every indication of being complex in nature and global in scope. To all
outward appearances, the discovery aspect of the case had been going on apace when, on March
16, 2016, Best-Lock changed the litigation focus dramatically by filing pursuant to Fed. R. Civ. P.
41(b) a Motion to Dismiss Lego's Second Amended Complaint (Doc. 84), based on Lego's asserted
failure to prosecute the action. The parties have fully briefed that Motion. Best-Lock filed a
Memorandum of Law in Support of the Motion ("Best-Lock Dismiss Br.") on March 16, 2016
accompanied by an Affidavit of Lawrence S. Rosenthal ("Rosenthal Dismiss Aff.") with twenty-six
exhibits attached and an affidavit of Torsten Geller ("Geller Dismiss Aff.") with two additional
exhibits attached.1 Doc. 128. Lego filed a Memorandum in Opposition to the Motion ("Lego
Dismiss Br.") accompanied by an Affidavit of Elizabeth A. Alquist ("Alquist Dismiss Aff.") with
twenty-three exhibits attached. Doc. 129. Best-Lock thereafter filed a Reply Memorandum in
Support of the Motion ("Best-Lock Reply Br.") and additional exhibits. Docs. 133-34.
While this Motion to Dismiss by Best-Lock was pending, Lego filed a Motion for Partial
Summary Judgment as to liability for its infringement claims under Count One of its Second
Amended Complaint, as well as on several of Best-Lock's affirmative defenses and Counterclaims.
Docs. 130-32. Best-Lock then filed an Emergency Motion to Deny, Dismiss or Stay Lego's Motion
for Partial Summary Judgment ("Emergency Motion") with a supporting memorandum of law
("Emergency Motion Br.") and affidavit in support of its Emergency Motion ("Rosenthal Rule 56(d)
Aff."), arguing that Lego's Motion for Partial Summary Judgment should be denied or stayed in light
The Court will refer to Best-Lock's Exhibits for this Motion to Dismiss as "Best-Lock
Dismiss Ex." and "Dismiss Reply Ex." and to Lego's Exhibits as "Lego Dismiss Ex."
of the fact that Best-Lock's Motion to Dismiss was pending. Doc. 135. Best-Lock also purported
to make that Emergency Motion pursuant to Rule 56(d), which authorizes the district court to issue
an "appropriate order" when the nonmovant for summary "cannot present facts essential to justify
its opposition." Fed. R. Civ. P. 56(d).
The Court initially granted Best-Lock's Emergency Motion, denying Lego's Motion for
Summary Judgment without prejudice to refiling once the Motion to Dismiss was resolved. Doc.
136. Lego sought reconsideration of the Court's Doc. 136 Order ("Lego Reconsider Br."). Doc. 137.
As a result, the Court vacated its Doc. 136 Order and stayed the requirement for Best-Lock to file
an opposition to partial summary judgment in favor of Lego until the Court decided Lego's Motion
to Reconsider. Doc. 139. Best-Lock then filed an opposition to Lego's Motion to Reconsider
("Best-Lock Reconsider Br."). Doc. 141. Lego filed a reply brief in support of its Motion to
reconsider ("Lego Reply Br."). Doc. 142.
Out of this welter of motion activity, two motions presently ripe for decision emerge: BestLock's Motion to Dismiss Lego's Second Amended Complaint; and Lego's Motion for
Reconsideration of the Court's Order staying Lego's Motion for Partial Summary Judgment until
Best-Lock's Motion to Dismiss has been adjudicated. This Ruling resolves those two pending
Background and Procedural History
I begin with a background and procedural history that is applicable to both motions.
Lego first filed a Complaint in this action against Best-Lock on October 14, 2011. Doc. 1.
Lego has manufactured toys called "minifigures" since 1978. These minifigures depict people, each
with a cylindrical head, cylindrical neck, a trapezoidal torso, bent arms, hooked hands and square
block-like feet. Each is designed so that the user can disassemble them and attach them to other
figures and to studded blocks. All the minifigures have the same shape but vary in the twodimensional representations of facial features and clothing styles on the torso and head respectively.
In 1994 Lego registered its Minifigure Copyrights with the United States Copyright Office.
Best-Lock has been selling its own minifigures in the United States since 1998. These
minifigures can also be attached to studded blocks and are the same size as Lego's, with cylindrical
heads, cylindrical necks, trapezoidal torsos, bent arms, hooked hands and square block-like feet.
The minifigures differ in color and also in the two-dimensional representations of facial features and
clothing. Other companies such as Hasbro, Inc. and Mega Brands, Inc. Create and sell similar
On or about July 14, 2011, the U.S. Customs and Border Protection Service ("CBP"), at the
behest of Lego, carried out the first of a series of seizures of shipments from abroad of Best-Lock's
toy blocks and minifigures. The CBP, administratively echoing Lego's principal allegation in the
case, asserted that such a seizure occurred because Best-Lock's minifigures infringed Lego's '104
copyright. Best-Lock petitioned to have CBP release the shipments and cease the seizures, to no
avail. Best-Lock's initial efforts to liberate its minifigures did not succeed.
Best-Lock filed an Answer to Lego's initial Complaint on January 5, 2012 and asserted
certain counterclaims against Plaintiffs.
Best-Lock amended this Answer and
Counterclaims on February 6, 2012 and moved for a Preliminary Injunction against Lego. Docs.
Best-Lock also filed a separate Complaint against Lego Juris AS, Lego Group and
Lego Systems Inc., which was transferred to this District and consolidated with the present
action in March 2012. Doc. 58. The parties represented to the Court that Best-Lock would add
those allegations as Counterclaims to the instant action so that there would be a "single set of
pleadings to direct this case." Doc. 67. The cases have thus proceeded on that basis.
35, 37.3 Lego filed an Amended Complaint on February 13, 2012, Doc. 40, and sought to join two
additional Defendants to this action, Docs. 44-45. Best-Lock twice sought extensions for its time
to respond to the Amended Complaint, Docs. 42, 47, both of which this Court granted, Docs. 46, 49
in February 2012. The parties both sought extensions to respond to discovery requests in March
2012. Docs. 56-57.
The parties fully briefed Best-Lock's motion for a Preliminary Injunction. Docs. 37, 43, 52.
The Court held a hearing on Best-Lock's motion, as well as on Lego's motion to join two additional
Defendants on March 8, 2012. Doc. 60. Best-Lock subsequently filed a partial opposition to Lego's
motion to join additional Defendants and Lego filed a reply brief in support. Docs. 63, 71. The
Court requested supplemental briefing related to Best-Lock's motion for a Preliminary Injunction,
Doc. 74, which the parties filed on May 11, 2012, Docs. 75-76. The Court also granted Lego an
extension to respond to Best-Lock's discovery requests on May 15, 2012. Doc. 78.
On July 11, 2012, the Court denied Best-Lock's motion for a Preliminary Injunction, 874 F.
Supp. 2d 75 (Lego I). On August 20, 2012, the Court granted in part and denied in part Lego's
motion to join two additional Defendants, 886 F. Supp. 2d 65 (Lego II). Thereafter, Lego filed a
corrected Second Amended Complaint, Doc. 84, which Best-Lock filed an Answer and
Counterclaims to on September 13, 2012, Doc. 86. Lego filed an Answer to these Counterclaims
on October 4, 2012. Doc. 92. The parties each moved for a Protective Order in the fall of 2012.
Docs. 90-91, 93-94. The Court granted in part and denied in part each of these motions in December
2012, 2012 WL 6156129 (Lego III). Lego requested and was granted more time to file for
reconsideration of that Ruling. Docs. 100-101. In April 2013, the Court denied reconsideration of
Best-Lock also moved for a Temporary Restraining Order at that time, Doc. 36, which
this Court denied in an Electronic Order, Doc. 38, on February 7, 2012.
its Ruling on the Protective Order, 2013 WL 1611462. In May 2013, the Protective Order issued
in this action. Doc. 110.
On May 20, 2014, the Court directed counsel to send simultaneous letters on June 12, 2014
updating the Court on the status of the case and recommending how the case should proceed. Doc.
113. In that Order, the Court recognized that the case had become "somewhat like a sleeping
volcano," id. at 1, and inquired as to the impact of the Supreme Court's decision in Petrella v. MetroGoldwyn Mayer, Inc., 134 S. Ct. 1962 (2014) on the parties' discovery, Doc. 113 at 3. Petrella,
which resolved a conflict between circuits, held that laches cannot be invoked to preclude
adjudication of a claim for damages for copyright infringement brought within the three-year
window of the applicable statute of limitations for such claims. Id. That holding directly impacted
the case at bar, because this Court had previously concluded that laches did apply in the copyright
context, and that more discovery between the parties on laches-related issues was necessary to a
decision on a preliminary or permanent injunction. The parties submitted letter briefs to the Court,
and the Court held a telephonic conference to further discuss the pending discovery issues. Docs.
115-117. At the conference, the parties disputed whether discovery should be bifurcated, with BestLock seeking to bifurcate discovery so as to limit it initially to its defense of equitable estoppel. The
Court reserved a decision on bifurcation.
On March 23, 2015, the Court directed that counsel for each party file letters detailing the
status of the case and attend a telephonic status conference. Doc. 118. The Court held another
telephonic conference on April 9, 2015, and on April 15, 2015 issued a ruling directing that
discovery would not be bifurcated. Doc. 120. The Court directed counsel to file further status
reports on October 15, 2015. Id. at 3. The parties agreed after this Ruling that prior discovery
requests would be deemed abandoned and the only operative requests going forward would be newly
propounded requests. Lego Dismiss Ex. J. Each party subsequently moved for extensions of time
to respond to certain discovery requests, which the Court granted. Docs. 123-24, 126-27. When the
parties filed their letters updating the Court on the status of the case, it was clear that the parties were
continuing to attempt to resolve ongoing discovery disputes. See, e.g., Lego Dismiss Ex. D. This
was confirmed by the extensive correspondence between the parties filed with the Court related to
this motion. That correspondence extended from September 14, 2015 through December 23, 2015.
Lego Dismiss Exs. K-V.
On March 16, 2016, Best-Lock filed the instant Motion to Dismiss, based on Lego's asserted
failure to prosecute. Doc. 128. On April 13, 2016, before Best-Lock's Motion to Dismiss was fully
briefed and while it was still pending, Lego filed its Motion for Partial Summary Judgment, Docs.
130-32. As noted supra, the Court initially granted Best-Lock's Emergency Motion to deny this
Motion for Partial Summary Judgment without prejudice to refiling for good cause shown under
Federal Rule of Civil Procedure 56(d). Lego has sought reconsideration of this decision. That is
the second of the two pending motions resolved by this Ruling.
The Court now turns to consideration of Best-Lock's Motion to Dismiss, and then to Lego's
Motion to Reconsider.
Motion to Dismiss for Failure to Prosecute
Standard of Review
Federal Rule of Civil Procedure 41(b) provides that "[i]f the plaintiff fails to prosecute or to
comply with these rules or a court order, a defendant may move to dismiss the action or any claim
against it." The Supreme Court perceives the value of this rule to be that it prevents "undue delays"
and "congestion in the calendars of the District Courts." Link v. Wabash R.R. Co., 370 U.S. 626,
629-30 (1962). The authority of a district court to dismiss an action on one or another of these
grounds "cannot seriously be doubted" and can be done sua sponte by a district judge. Id. at 63031. Pursuant to the law of this Circuit, five factors must be weighed by this Court in considering
a Rule 41(b) dismissal: "(1) the duration of the plaintiff's failure to comply with the court order, (2)
whether plaintiff was on notice that failure to comply would result in dismissal, (3) whether the
defendants are likely to be prejudiced by further delay in the proceedings, (4) a balancing of the
court's interest in managing its docket with the plaintiff's interest in receiving a fair chance to be
heard, and (5) whether the judge has adequately considered a sanction less drastic than dismissal."
Baptiste v. Sommers, 768 F.3d 212, 216 (2d Cir. 2014) (quoting Lucas v. Miles, 84 F.3d 532, 535
(2d Cir. 1996)) (internal quotation marks omitted). "No single factor is generally dispositive." Id.
(citing Nita v. Conn. Dep't of Envtl. Prot., 16 F.3d 482, 485 (2d Cir. 1994)).
While dismissals under Rule 41(b) are reviewed for abuse of discretion, the Second Circuit
has stressed that it is "'the harshest of sanctions'" and "insist[ed] that dismissal 'be proceeded4 by
particular prerequisites,' including 'notice of the sanctionable conduct, the standard by which it will
be assessed, and an opportunity to be heard.'" Id. at 217 (quoting Mitchell v. Lyons Prof'l Servs.,
Inc., 708 F.3d 463, 467 (2d Cir. 2013)). Indeed, even where the court issues a notice of possible
dismissal and a plaintiff does not comply with the court's directive, "the court must still make a
finding of 'willfulness, bad faith, or reasonably serious fault' by evaluating those criteria." Id.
(quoting Mitchell, 708 F.3d at 467). Moreover, the Second Circuit has instructed that dismissal
"should be used in only extreme situations." Id. (quoting Mitchell, 708 F.3d at 467) (internal
Thus in original; verb should probably read "preceded."
quotation marks omitted).
As a preliminary matter, the Court notes that in their briefs on this motion, counsel have
disputed with an asperity bordering on ad hominem the procedural history of this litigation,
numerous facts related to Lego's and Best-Lock's alleged delay and failures, and discovery issues
that have apparently been festering in this litigation for years. Indeed, those latter disputes run
through the present briefs to such an extent Best-Lock felt it necessary to remind the Court at the
outset of its motion to dismiss that "[t]o be clear, this motion is not a motion for an Order related to
discovery." Best-Lock Dismiss Br. at 2.
That distinction is worth drawing, because a motion to dismiss a complaint for failure to
prosecute is not the appropriate vehicle to litigate discovery issues encountered by either side. To
the extent the disputes are relevant to any alleged delay, the Court will take that into account.
Otherwise, both parties were, and are still, free to bring motions related to these discovery failures
before the Court. Because they have chosen not to do so at this point, the Court has no occasion to,
and does not determine, what discovery should or should not have happened. The Court will now
analyze each of the factors recited in Baptiste to determine whether a Rule 41(b) dismissal should
Duration of Delay
"The first factor to be examined breaks down into two parts: (1) whether the failures to
prosecute were those of the plaintiff, and (2) whether those failures were of significant duration."
U.S. ex rel. Drake v. Norden Systems, 375 F.3d 248, 255 (2d Cir. 2004) (citation omitted).
A motion asserting a failure to prosecute requires a two-part inquiry: (1) whether the failures
to move the case forward were ascribable to the party plaintiff, here Lego; and (2) whether those
failures were of a duration sufficient to warrant the ultimate sanction of dismissal. See id. In
complex and strenuously contested cases, such as this one pitting Lego against Best-Lock and vice
versa, it is not uncommon for the litigation to progress in fits and starts over dams and obstructions,
rather than flowing as a smooth and steady stream. The trial judge's function in Rule 41(b) practice
is to ascribe responsibility for delay to one party, or to the other, or to both, or to neither. "The
question we must ask with respect to duration is simply whether or not the delay was caused by
plaintiff's side as a whole." Id.
There were several periods of inactivity throughout this time-consuming litigation that
warrant discussion and further analysis. The first interval, when the battle fleets were drawn up but
appeared on the surface to be becalmed, occurred from the Court's entry of the Protective Order on
May 13, 2013 until May 20, 2014 when the Court ordered the parties to update it on the status of the
litigation. Docs. 110, 113.5 Thus, the delay was for just over a year. Notably, neither the Court nor
the Clerk warned Lego that failing to continue to prosecute the case at that juncture could lead to
dismissal of the case. Instead, in its May 20, 2014 order the Court sought only an update on the
status of the case and to assist in moving the case along, in light of the recent Supreme Court
decision in Petrella. Doc. 113.
At that point, both parties represented that they had been engaging in settlement negotiations,
which according to Lego were taking place on a global scale. Lego Dismiss Ex. A at 1 (June 12,
2014 letter from Best-Lock stating "[t]he parties are actively pursuing settlement"); Lego Dismiss
Ex. B at 1 (June 12, 2014 letter form Lego stating "[s]ince this Court's July 11, 2012 Ruling on
Best-Lock asserts that this delay started on October 4, 2012. See Best-Lock Dismiss Br.
at 7. However, as recounted in Part I of this Ruling, there was an ongoing dispute about the
entry of a Protective Order that occurred during this period and that was not fully resolved until
the Protective Order issued on May 13, 2013. Docs. 109-10.
defendant's Motion for Preliminary Injunction [Doc. 79], the parties have engaged in extensive
global settlement negotiations lead by counsel for the parties in Germany"). The Court recognized
in its June 17, 2014 Order, Doc. 115, that the parties had stated the settlement negotiations had
occurred "with differing degrees of emphasis." Id. at 1. Best-Lock emphasizes that it had made the
settlement offer to Lego and Lego had never even responded. Best-Lock Dismiss Br. at 11; BestLock Reply Br. at 5. Best-Lock, therefore, faults Lego for this entire period of delay, a charge Lego
vehemently denies. Lego Dismiss Br. at 3-5. In any event, although this period of delay is
significant in length, it is, to some extent, excused by the fact that the parties agree settlement
discussions were occurring, at least in some fashion, with neither party appearing willing to move
the case for that reason, or due to outstanding disputes.6
Importantly, Best-Lock also expressed a desire to bifurcate the discovery to the Court at this
point, in response to the Court's inquiry on May 20, 2014. Lego Dismiss Ex. A. It is clear that at
this time, both parties disagreed over the scope of appropriate discovery (although no discovery
motions were then pending). The Court ordered a telephone conference to discuss moving the case
forward, given the differing approaches expressed in the parties' letters. Doc. 115. The conference
was held on July 10, 2014.
The second period of litigation inactivity occurred from the date of the Court's conference,
July 10, 2014, through March 23, 2015. See Docs. 117-118. This inactivity resulted principally
Best-Lock at various points reiterates that it is the duty of the plaintiff to move the case
forward, and thus, only Lego should have fault for this period of seeming inactivity. Although
Best-Lock's point is well-taken, Lego has alleged that Best-Lock is also responsible for the delay
by failing to respond to Lego regarding its 26(f) Report proposal and creating the various
discovery disputes. Lego Dismiss Br. at 7-10. Although Lego should have taken action against
Best-Lock for any repeated stalling, the Court intervened and made such action unnecessary
during this delay.
from Best-Lock's request to bifurcate discovery, Lego's opposition to that procedure, and the Court's
consideration and eventual denial of the bifurcation request. At the conclusion of the telephonic
conference held July 10, 2014, the Court reserved decision on whether discovery should be
bifurcated—to proceed first only on the issue of Best-Lock's equitable estoppel defense, and then
continuing in full flood only after a dispositive decision on that issue. Dismiss Reply Ex. 18 at 32.
The Court explicitly advised counsel that the case would continue only after it rendered a decision
on the issue. That decision was filed on April 15, 2015, Doc. 120. Prior to that decision, the Court
requested an update on the case from the parties on March 23, 2015. Doc. 118.7 The Court takes
neither pride nor satisfaction in the amount of time it took to decide this bifurcation issue; but the
pertinent point for present purposes is that this portion of delay was not caused in any degree by "the
The final period of inactivity occurred from October 9, 2015 until Best-Lock's Motion to
Dismiss filed on March 16, 2016, promptly followed by Lego's motion for partial summary
judgment on April 13, 2016. During this interval of more than five months, nothing occurred on the
docket and neither party filed any motions or sought to enforce or revise a scheduling order. The
letters submitted by Lego and Best-Lock as exhibits, including those submitted to the Court on
Best-Lock faults Lego for acting as though it would move the case along, offering
scheduling orders and never following through. See Best-Lock Dismiss Br. at 8-11, 17; BestLock Reply Br. at 8. Such actions are certainly unacceptable, but the Court cannot conclude that
this is what Lego has done. The docket activity and correspondence between the parties
indicates that there were simply significant areas of dispute between the parties regarding
discovery, scheduling and a number of issues. In addition, as one of Best-Lock's primary
examples, Best-Lock repeatedly faults Lego for saying it would move forward with discovery at
the July 10, 2014 telephonic conference and then not doing so, see Best-Lock Reply Br. at 8.
However, as the Court has explained, such delay was in part due to Best-Lock's request to
bifurcate discovery, Lego's opposition to that request and the Court's own delay in deciding the
October 15, 2015 as requested by its April Order, Doc. 120, clearly demonstrate that the parties were
contesting certain discovery issues and conducting extensive correspondence back and forth at least
from September 14, 2015 through December 23, 2015. Lego Dismiss Exs. K-V; Best-Lock Dismiss
Exs. 6, 12, 14, 17-19. Despite these ongoing disputes, in the last status updates provided to the
Court on October 15, 2015, Lego represented that discovery would be completed by the end of
January 2016 and suggested that the parties provide status reports at that time. Lego Dismiss Ex.
Based on the correspondence presented to the Court, it appears that Lego had revised its
responses to Best-Lock's discovery and sent to opposing counsel a series of letters, the last three on
December 23, 2015, which addressed Best-Lock's issues with Lego's discovery responses and took
issue with Best-Lock's production and responses to discovery requests. Lego Exs. T-V. Nothing
appears to have happened after Lego sent these letters until Best-Lock filed the instant Motion to
Dismiss, Lego then risposting with its Motion for Partial Summary Judgment. Lego contends this
delay occurred because Best-Lock never responded to this most recent correspondence. Lego
Dismiss Br. at 15-16. Best-Lock's main and reply briefs fail to address its lack of response to such
letters; Best-Lock simply asserts repeatedly that the delay was caused by Lego and asserts that Lego
had, in Best-Lock's view, inadequately updated its responses. See Best-Lock Dismiss Br. at 11;
Best-Lock Reply Br. at 7. Lego contends that it faced deciding whether to file a motion to compel
production, given Best-Lock's refusal to produce certain requested documents, or to file a motion
for partial summary judgment, on the theory that such relief was warranted even in the absence of
those documents. Lego Dismiss Br. at 15-16. Lego asserts that it was in the process of filing that
motion for summary judgment at the time of Best-Lock's Motion to Dismiss, id. at 16, and it did so
file the motion within a week of filing its opposition to Best-Lock's Motion to Dismiss. Best-Lock
responds that Lego filed its summary judgment motion only in a belated and transparent effort to
avoid dismissal for its own failure to prosecute. Best-Lock Reply Br. at 2.
These conflicting perceptions of motivation are not surprising, but do not matter. Regardless
of Lego's motives in filing its Motion for Partial Summary Judgment, there was a nearly four-month
period of inactivity by Lego from December 23, 2015 until April 13, 2016 when Lego filed it's
Motion for Partial Summary Judgment, about one month after Best-Lock filed the instant Motion
to Dismiss and a week after Lego had filed its opposition to the instant motion. Lego had left the
impression with the Court that discovery would be complete by the end of January 2016. When that
appeared to no longer be likely, the Court was not informed and apparently the correspondence
between the parties ceased altogether. However, the inactivity during this period can fairly be
equally attributed to Lego and Best-Lock, since Best-Lock totally failed to respond to Lego's
outstanding December 23 letters, whose purpose was to get the case moving. Instead of responding
to Lego's letters, Best-Lock did nothing in the case and waited until March 16, 2016 to file Motion
to Dismiss on the ground, not free of irony, that Lego was doing nothing in the case.
Best-Lock spends a large portion of its brief arguing that in addition to these delays, Lego
has "stonewalled during periods of discovery" and has not properly responded to Best-Lock's
discovery requests, which has had the effect of delaying the case and preventing Best-Lock from
filing its own summary judgment motion. Best-Lock Dismiss Br. at 7, 11-17. However, Lego has
not disregarded a Court Order or failed to comply with discovery rules altogether; instead, Lego has
responded to each of Best-Lock's requests and objected to some of them.8 Lego has a right to do so.
Best-Lock relies on M&H Cosmetics, Inc. v. Alfin Fragrances, Inc., 102 F.R.D. 265,
267 (E.D.N.Y. 1984) to assert that Lego's delay and incomplete discovery responses are
sufficient to support Rule 41(b) dismissal. However, this case is distinguishable. In M&H, the
plaintiff failed to take any action on the case for over a year, at which point the Court held a
Best-Lock was, and is, free to challenge Lego's discovery responses and objections through a proper
motion to compel production. Even if I accept the scenario presented by Best-Lock, I cannot
conclude that such conduct on Lego's part caused delays of "significant duration," as courts in this
Circuit construe that phrase in the Rule 41(b) context. See, e.g., Lassen v. Hoyt Livery, Inc., No. 1301529, 2015 WL 2352248, at *3-4 (D. Conn. May 15, 2015) (denying Rule 41(b) dismissal where
delay consisted of certain plaintiffs' failure to produce documents in a four-month period, but where
plaintiffs had responded to the requests promptly).9
In each period of inaction and consequent delay described supra, there were at least some
legitimate reasons for the delay (in one instance, ascribable to the Court itself). The delays are, in
most cases, attributable in some measure to both parties: a reality the Court cannot disregard in the
context of a motion seeking to impose upon Lego the "harshest" remedy of being nonsuited. Each
time the Court intervened in this contentious case, Lego responded and took some action to further
move the case, albeit slowly. This sufficiently distinguishes this action from others relied upon by
Best-Lock, where dismissal was granted or affirmed after the plaintiff failed utterly to move the case
along or was wholly unresponsive to the defendants. See, e.g., Chira v. Lockheed Martin Corp., 634
F.2d 664, 666-67 (2d Cir. 1980) (affirming Rule 41(b) dismissal where plaintiff failed altogether to
comply with court order and six-month deadline for discovery); West v. City of New York, 130
status conference and ordered discovery completed by a set date. Id. at 267. Plaintiff then failed
to adequately and timely respond to discovery requests and defendant sought dismissal of the
litigation. Id. Here, Lego has responded in full to Best-Lock without the intervention of the
Court. Best-Lock may not appreciate Lego's responses due to Lego's objections and lack of
information given or documents produced, but again, that is grounds for a motion to compel not
a motion to dismiss for failure to prosecute.
At most there was recently a four month delay attributable to both parties. Such a
period of time is not significant enough to even warrant a warning that the case may be
dismissed from the Clerk pursuant to this District's Local Rules, D. Conn. Local R. 41(a).
F.R.D. 522, 523-24 (S.D.N.Y. 1990) (dismissing case pursuant to Rule 41(b) in light of a delay of
over one year by plaintiff and plaintiff's failure to conduct any discovery prior to expiration of the
time ordered by the court).
Best-Lock characterizes the delay as occurring for the entire pendency of this case, over five
years, without any movement of significance by Lego. For the reasons described above, and based
on the procedural history recounted in Part I, the Court does not find that to be an accurate portrayal.
Although the case has moved slowly, perhaps more so than it should, more than one ship is
responsible for the convoy's leisurely pace. It would be unjust to say that "the delay was caused by
plaintiff's side as a whole" (a phrase the Second Circuit made clear in Drake included the plaintiff
and his attorney). See Drake, 375 F.3d at 255. This case surely does not present a unilateral and
altogether inexcusable failure by plaintiff Lego to prosecute it for over five years.10 Nor has BestLock been an innocent bystander, harmed by delays solely ascribable to other parties.
Best-Lock is correct that this litigation has in general been pending too long and without
significant progress toward an appropriate resolution. The recent delay in which the parties wholly
failed to communicate, the unresolved discovery disputes between both parties and the lack of any
deadlines to move this case forward are concerning. Regardless, the delays clearly do not warrant
Best-Lock points to Lego's actions in resolving two other litigations regarding
copyright infringement, an investigation before the United States International Trade
Commission and another in this district based on that investigation, as evidence that Lego is
unnecessarily delaying this action. Best-Lock Dismiss Br. at 3-4. However, those litigations
were based on other patents and copyrights and the investigation settled because of Best-Lock's
agreement to a Consent Order Stipulation. Lego Dismiss Ex. W. The Court finds Best-Lock's
Notice that Failure to Comply Would Result in Dismissal
The second factor the Court must consider is the adequacy of notice that failure to comply
and prosecute the action would result in dismissal. "A court's prior warning of dismissal, and
subsequent inaction by plaintiff, weighs in favor of dismissal." Europacific Asset Mgmt. Corp. v.
Tradescape, Corp., 233 F.R.D. 344, 353 (S.D.N.Y. 2005) (citations omitted). The Court never
warned Lego that any of its inaction or inactivity would result in dismissal of its case. Each of the
times the Court intervened and requested updates from the parties, the Court did not mention
dismissal as a possibility. Docs. 113, 118.
Best-Lock asserts that the fact that the Court had to intervene should be enough to put Lego
or any reasonable attorney on notice that the case may be dismissed due to a lack of prosecution.
Best-Lock Dismiss Br. at 17-18. The Court disagrees. The Second Circuit has "insist[ed]" that any
dismissal "'be proceded by particular procedural prerequisites,' including 'notice of the sanctionable
conduct, the standard by which it will be assessed, and an opportunity to be heard.'" Baptiste, 768
F.3d at 216-17 (quoting Mitchell, 708 F.3d at 467). Lego received no such notice and no
opportunity to be heard regarding the reasons for any delay. In Baptiste, the Second Circuit faulted
a district court's orders for failing to "provide clear guidance on how [the plaintiff] could avoid
dismissal." Id. at 218. Here, Lego was afforded no opportunity at all to avoid dismissal, and the
Court never provided any such guidance on avoiding dismissal to Lego. Moreover, the Second
Circuit has repeatedly considered it an abuse of discretion to grant Rule 41(b) dismissal where the
plaintiff received no notice that his or her case was "on the brink of dismissal if [plaintiff] failed to
respond." Nita, 16 F.3d at 486 (concluding that this factor, among others, suggested that the
dismissal was an abuse of discretion); see also Baptiste, 768 F.3d at 216-17 (holding that a district
court's dismissal was an abuse of discretion in part because plaintiff received inadequate notice and
did not receive an opportunity to be heard).
Although the "absence of notice as to the possibility of dismissal or the failure to hold an
adversary hearing [does not] necessarily render such a dismissal void," the circumstances must show
that the party had knowledge as to the consequences of his own conduct. Link, 370 U.S. at 632-33.
Here, the circumstances are not sufficient to show that Lego had knowledge that dismissal was even
an option being considered by the Court (and in fact was not), let alone that dismissal might be
granted at this juncture. The lack of notice weighs heavily against dismissal.
Prejudice to Defendants from Further Delay
The next factor the Court must examine "is whether defendants are 'likely to be prejudiced
by further delay.'" Drake, 375 F.3d at 256 (quoting Martens v. Thomann, 273 F.3d 159, 180 (2d Cir.
2001)). Prejudice may be presumed in certain circumstances, but the need to show actual prejudice
is proportionally greater where the delay is more moderate or excusable. Id. (citing Lyell Theatre
Corp. v. Loews Corp., 682 F.2d 37, 43 (2d Cir. 1982)).
Best-Lock asserts that because of this litigation, and its dragged out nature, its sales have
been diminished and it is losing profit every single day the litigation continues. See Best-Lock
Dismiss Br. at 18; Geller Dismiss Aff. ¶¶ 13-16. Best-Lock also argues that the litigation itself has
cost a significant amount, given the stop-and-go nature of the litigation, and that because of Lego's
discovery related delays it has been unable to completely formulate its equitable estoppel defense.
See Best-Lock Dismiss Br. at 18.11 Lego does not dispute that Best-Lock may "theoretically" be
The Court notes that this is an interesting assertion because Best-Lock previously
argued during the April 9, 2015 telephonic conference that even then, prior to the current
discovery disputes, on that record Best-Lock was entitled to dismissal of Lego's infringement
claim on the ground of equitable estoppel. Doc. 120 at 2. Of course circumstances change and
counsel is not held to such an assertion, but it is worth noting here that Best-Lock previously
went so far as to make such an argument.
suffering from the loss of its sales of the product and that customers may not be buying the product
due to infringement fears. Lego Dismiss Br. at 30. Lego argues that because the delays were due
to ongoing disputes between both parties, Best-Lock cannot claim prejudice.
Having concluded that the delays occurring throughout this litigation were at least in part
excusable and not significant enough to warrant dismissal, the Court does not agree with Best-Lock
that prejudice should be presumed in this instance. Best-Lock also fails to demonstrate that it will
suffer actual prejudice as the result of this particular sort of delay. Best-Lock will likely continue
to suffer ongoing damages and associated litigation costs from the continuation of this litigation—a
point with which even Lego "theoretically" agrees. However, Best-Lock has not provided sufficient
evidence to the Court from which the Court can conclude that the delays complained of have
increased its litigation costs and ongoing damages unnecessarily, to any material degree. See
LeSane v. Hall's Sec. Analyst, Inc., 239 F.3d 206, 210 (2d Cir. 2001).
In addition, Best-Lock claims it has not received discovery needed to put forward its defense
and that this has prejudiced it going forward. Best-Lock Dismiss Br. at 19. Best-Lock is not
claiming that such evidence is unavailable to it because of the delay or any continued delay, but
instead confines itself to complaining that Lego has wrongfully refused to produce it. Again, such
a complaint is one more properly made in a motion to compel. Best-Lock cannot suffer prejudice
from some theoretical evidence it has been denied if Lego is rightfully refusing to give it (or does
not have it at all). At this point, the Court is without any basis to conclude that Best-Lock has been
denied discovery through Lego's alleged delays in a manner that has caused actual prejudice. See
Baptiste, 768 F.3d at 218 (concluding that defendants have "not pointed to any concrete way that
they have suffered or will suffer prejudice due to [plaintiff's] delay" and that asserting in the abstract
that the likelihood of evidence no longer existing is insufficient to suggest prejudice); see also
LeSane, 239 F.3d at 210 (noting that defendant gave no indication that the delay "reduced (perhaps
due to decaying evidence) their likelihood of success on the merits").
Moreover, Lego is correct that where "defendants themselves [are] responsible for much of
the delay" prejudice will be lacking. Martens, 273 F.3d at 181-82. Here, the delays occurred
because of ongoing disputes between the parties often regarding discovery and possible settlement.
Although it is unclear to the Court that Best-Lock was responsible for much of the delays, Best-Lock
did contribute to at least some of the delays.
For the above reasons, this factor also weighs slightly in favor of not dismissing this action
and is at best neutral in the analysis.
The Court's Interest in Managing Its Docket
The fourth factor requires the Court to consider "the balance between district court calendar
congestion and the plaintiff's right to an opportunity to be heard." Drake, 375 F.3d at 257. There
must be "compelling evidence of an extreme effect on court congestion." Baptiste, 768 F.3d at 21819 (quoting Lucas v. Miles, 84 F.3d 532, 535-36 (2d Cir. 1996)) (internal quotation marks omitted).
The Court has noted to the parties in the past that it is "not at a loss for cases to work on," Doc. 113,
and another district court has noted that "it is not an efficient use of the Court's time to allow this
case to languish on the docket in perpetuity on the possibility that, at some unknown future date,
Plaintiff will reappear to pursue his claims." Crenshaw v. McNamara, No. 15-6229, 2016 WL
2347485, at *5 (W.D.N.Y. May 4, 2016). The Court agrees with the sentiment expressed in
Crenshaw in that it is not an efficient use of the Court's time to have this action pending without any
end date in sight (or any operative scheduling order for that matter). Still, the Court has not been
presented with any "compelling evidence" of the "extreme effect" this action has had on the
congestion of the Court's docket, and the Court is aware of none. On balance, this factor is at best
neutral in the analysis.
Adequacy of Lesser Sanctions
Finally, lesser sanctions would adequately address the issues presented by Best-Lock.
District courts have been instructed by the Second Circuit to "meaningfully consider alternative
sanctions." Martens, 273 F.3d at 182. As mentioned numerous times in this Ruling, the true nature
of the disputes at issue appear to be the lack of discovery obtained by both parties. Dismissal is not
the appropriate remedy to address such issues. Instead, as recognized by Lego, the entry of a
scheduling order and appropriate motion deadlines would assist in the expedient resolution of this
matter. See Baptiste, 768 F.3d at 219 (noting that the district court could have effectively moved
the case forward without simply dismissing the action).
Balance of the Factors
On balance, the factors clearly do not favor or warrant the "harshest" remedy of dismissal
in this case. The delays, although at times lengthy and occurring far too often, have been—at least
in part— due to the conduct of both parties and of the Court. Lego had no notice that it would be
facing dismissal for inaction on its part in this litigation. The litigation has not overly congested this
Court's docket. Even assuming that Best-Lock has demonstrated actual prejudice that has resulted
or would result from the continuation of this case or further delay, that is not alone enough to
warrant dismissal. Lesser sanctions would adequately address the issues raised by Best-Lock's
Motion, which largely concern a lack of discovery Best-Lock feels it is entitled to. Moreover, the
Court has not found any "'willfulness, bad faith, or reasonably serious fault'" by Lego, a necessary
requirement to issuing a Rule 41(b) dismissal. Baptiste, 768 F.3d at 217 (quoting Mitchell, 708 F.3d
at 467). Best-Lock's Motion to Dismiss is therefore DENIED.
The Court now turns to Lego's pending Motion to Reconsider.
Lego's Motion to Reconsider
As recounted earlier, Lego filed a Motion for Partial Summary Judgment and supporting
memorandum of law ("Motion for Partial Summary Judgment Br.") as well a Statement of Material
Facts on April 13, 2016. Docs. 130-32. Best-Lock filed an Emergency Motion, which the Court
initially granted denying Lego's Motion for Partial Summary Judgment pursuant to Rule 56(d).
Lego immediately filed a Motion to Reconsider this decision because it did not have a chance to
initially respond to Best-Lock's Emergency Motion prior to the Court's Order, and as a result the
Court vacated its initial Order and stayed the deadline for Best-Lock to file an opposition until it
decided Lego's Motion to Reconsider. Doc. 139. The Court now turns to Lego's Motion to
Reconsider the Court's initial Order denying Lego's Motion for Partial Summary Judgment without
Reconsideration of this Court's Order
A district court may grant a motion to reconsider because of the need to prevent manifest
injustice and to prevent clear error. See Virgin Atlantic Airways, Ltd. v. Nat'l Mediation Bd., 956
F.2d 1245, 1255 (2d Cir. 1992) (citing 18 Charles A. Wright, et. al, Fed. Prac. & Proc. § 4478, at
790). Reconsideration, though generally denied and subject to strict standards, may be granted
when "the moving party can point to controlling decisions or data that the court
overlooked—matters, in other words, that might reasonably be expected to alter the conclusion of
the court." Jackson v. Post Univ. Inc., No. 08-1810, 2012 WL 1189075, at *4 (D. Conn. April 9,
2012) (quoting Shrader v. CSX Transp. Inc., 70 F.3d 255, 257 (2d Cir. 1995)). In the case at bar,
the Court gave no consideration to Lego's arguments because Lego, through no fault of its own, had
no opportunity to respond to Best-Lock's Emergency Motion. Given that particular circumstance,
I think it right to grant, and hereby do grant, Lego's Motion to Reconsider, to the extent that both
pending motions must now be adjudicated on their merits (Lego's Motion to Reconsider and BestLock's Emergency Motion).12 Accordingly, the Court addresses Lego's arguments opposing BestLock's Emergency Motion in full.13
Merits of Lego's Opposition to Best-Lock's Emergency Motion
Rule 56(d) permits a court, in the exercise of its discretion, to defer or deny a decision on
summary judgment if a "nonmovant shows by affidavit or declaration that, for specified reasons, it
cannot present facts essential to justify its opposition." Lego principally asserts that Best-Lock fails
to satisfy the requirements necessary to justify denying its Motion for Partial Summary Judgment
because Best-Lock does not demonstrate how the undiscovered evidence could create a genuine
issue of material fact. Lego Reconsider Br. at 3. That failure is material because Rule 56(d) requires
"submitting an affidavit that includes 'the nature of the uncompleted discovery; how the facts sought
are reasonably expected to create a genuine issue of material fact; what efforts the affiant has made
to obtain those facts; and why those efforts were unsuccessful.'" Whelehan v. Bank of Am., 621 F.
App'x 70, 73 (2d Cir. 2015) (summary order) (quoting Paddington Partners v. Bouchard, 34 F.3d
The Court finds unpersuasive Best-Lock's arguments that granting the motion to
reconsider is unnecessary because there is no manifest injustice or clear error. Because Lego had
no opportunity to respond through no fault of its own, its arguments deserve consideration by
this Court. Moreover, as there is merit to the arguments raised by Lego as described further in
this Ruling, reconsideration is necessary.
As an initial matter, one of Best-Lock's arguments in its Emergency Motion was that
the Court should deny or stay Lego's Motion for Partial Summary Judgment until resolution of
Best-Lock's Motion to Dismiss. Emergency Motion Br. at 2. Because the Court has resolved
Best-Lock's Motion to Dismiss in this Ruling, such an argument as a reason to support the denial
or stay of Lego's Motion for Partial Summary Judgment is now moot. The Court will only
address the other arguments for granting the Emergency Motion raised by Best-Lock and
opposed by Lego.
1132, 1138 (2d Cir. 1994) (applying earlier and substantially similar version of the Rule)).14
Courts have declined to continue discovery pursuant to Rule 56(d) where the affidavits
submitted in support insufficiently or conclusorily described forthcoming evidence and how that
evidence would demonstrate the existence of a genuine issue of material fact. See, e.g., Gualandi
v. Adams, 385 F.3d 236, 245 (2d Cir. 2004) (affirming district court's implicit denial of discovery
where plaintiff failed to "demonstrate that additional discovery was needed in order to decide the
jurisdictional issue"); United States v. Private Sanitation Indus. Ass'n, 995 F.2d 375, 377 (2d Cir.
1993) (affirming district court's denial of discovery where affidavit "only speculated about what
further discovery might reveal" and failed to "describe in specific terms evidence that might be
forthcoming and would demonstrate that a genuine issue actually existed"); Riley v. Town of
Bethlehem, 44 F. Supp. 2d 451, 459 (N.D.N.Y. 1999) (concluding that an affidavit failed to
adequately explain "why plaintiff cannot oppose summary judgment without discovery").
Moreover, "[a] court is not required to withhold consideration of a summary judgment motion based
on mere speculation." Roswell Capital Partners LLC v. Alternative Constr. Techs., 638 F. Supp. 2d
360, 372 (S.D.N.Y. 2009).
However, the Second Circuit has also made it clear that "summary judgment should only be
granted if 'after discovery, the nonmoving party has failed to make a sufficient showing on an
essential element of [its] case with respect to which [it] has the burden of proof.'" Miller v. Wolpoff
& Abramson, LLP, 321 F.3d 292, 303-04 (2d Cir. 2003) (quoting Hellstrom v. U.S. Dep't of Veterans
Affairs, 201 F.3d 94, 97 (2d Cir. 2000)) (emphasis in original). "The nonmoving party must have
had the opportunity to discover information that is essential to [its] opposition to the motion for
Curiously, Best-Lock's Emergency Motion and supporting papers never once recites or
refers to this standard or any applicable caselaw.
summary judgment." Hellstrom, 201 F.3d at 97 (internal quotation marks and citation omitted).
Moreover, "[o]nly in the rarest of cases may summary judgment be granted against a [nonmovant]
who has not been afforded the opportunity to conduct discovery." Id. (citation omitted).
Lego's Motion for Partial Summary Judgment seeks judgment as to liability on Count I of
its Second Amended Complaint for copyright infringement. Motion for Partial Summary Judgment
Br. at 4-12. Lego argues that it is entitled to summary judgment on this Count because it holds valid
copyrights that Best-Lock is infringing upon by actually copying the protectable elements of the
Minifigure Copyrights. See id. Lego also asserts that it is entitled to summary judgment dismissing
Best-Lock's affirmative defenses of invalidity, laches and equitable estoppel, as well as on several
of Best-Lock's related Counterclaims, which assert the
invalidity of the copyrights, non-
infringement of the copyrights, and fraud on the copyright office, the CBP and this Court. Id. at 1235. Specifically, Lego argues that Best-Lock cannot prove that the Minifigure Copyrights are
invalid, because (1) the copyrights do not protect functional elements of the figures, and (2) Lego
has not perpetuated some fraud on the copyright office in filing for the copyrights. Id. at 13-19.
Lego asserts that Best-Lock's laches and equitable estoppel defenses each depends upon a crucial
form of inaction on Lego's part, which the facts of the case preclude Best-Lock from showing. Id.
Lego argues that Best-Lock's laches defense fails as a matter of law, in light of the Pertrella
decision, and that Best-Lock's equitable estoppel defense also fails as a matter of law because BestLock cannot prove the necessary elements of that defense. Id. at 21-22. In addressing Best-Lock's
equitable estoppel defense, Lego first argues that as a matter of law Best-Lock must show something
more than "bare inaction" by Lego to support the defense, which Best-Lock cannot do. Id. at 22-24.
Lego alternatively argues that Best-Lock cannot prove the elements necessary to support the
defense. Id. at 24-35. Lego assumes, for purposes of its motion only, that Best-Lock can establish
an issue of fact as to the first element of the defense—whether Lego had knowledge of Best-Lock's
alleged continuing, historical infringement. Id. at 25-26. Lego argues instead that Best-Lock cannot
prove the other elements of the defense because (1) Best-Lock cannot show that Lego acted or failed
to act in a manner that would justify Best-Lock's reliance (defeating the second element of the
defense as the defense was articulated by this Court in Lego I); (2) Lego's affixation of the copyright
notice on the figures would have shown Best-Lock that the figures were protected by copyright
(defeating the second and third elements of the defense as the defense was articulated by this Court
in Lego I); and (3) Best-Lock cannot prove that it detrimentally relied on Lego's conduct or inaction
(defeating the fourth element of the defense as the defense was articulated by this Court in Lego I).
Id. at 26-35.
Best-Lock submitted a four-page Rule 56(d) affidavit in support of its Emergency Motion.
See Rosenthal Rule 56(d) Aff. This affidavit does not explain how the requested discovery could
conceivably create any genuine issues of material fact in response to the specific and narrow
arguments made in Lego's Motion for Partial Summary Judgment. For example, Best-Lock seeks
discovery on the "conception and design of Lego's Minifigures," Rosenthal Rule 56(d) Aff. ¶ 3.
However, Best-Lock fails to explain how such discovery could assist it with creating any genuine
issue of material fact, or how all the discovery it has already received is insufficient on this point.
As another example, Best-Lock asserts that it needs discovery on "Lego's initial and continuous
knowledge of Best-Lock's alleged infringement." Rosenthal Rule 56(d) Aff. ¶ 3. This assertion
ignores a significant circumstance: Lego's Partial Summary Judgment Motion assumes that BestLock can create a genuine issue of material fact as to whether Lego knew of the continuing
infringement by Best-Lock in the context of Best-Lock's equitable estoppel defense. Lego Motion
for Partial Summary Judgment Br. at 25-26.15 Lego argues that it is entitled to summary judgment,
notwithstanding that conceded point, because Best-Lock cannot establish the other elements of its
estoppel defense. Best-Lock fails to explain how the demanded discovery is relevant to these
particular issues, or to its opposition to Lego's limited motion for summary judgment.16
Moreover, the relief requested by Best-Lock's Rule 56(d) affidavit is wholly conclusory and
fails to explain how or why Best-Lock would be entitled to such relief. For example, the Rosenthal
Rule 56(d) Aff. ¶ 4 requests all of the discovery requested in Best-Lock's Consolidated and
Operative Interrogatories, Consolidated and Operative Requests for Production of Documents and
Things, and Operative Consolidated Requests for Admission. Rosenthal Rule 56(d) Aff. Exs. A-C.
This totals fifty pages worth of requests for documents and admissions, and includes, for example,
requests related solely to damages, Rosenthal Rule 56(d) Aff. Ex. A at 5 ¶ 3, an issue not presented
in any way by Lego's Motion for Partial Summary Judgment. The Court cannot determine, in the
absence of any explanation by Best-Lock, which discovery requests would lead to evidence of the
sort necessary to create a genuine issue of material fact as to the specific questions presented by
Lego's Motion, as opposed to information having nothing to do with issues the Motion raises.
Similarly, Best-Lock also appears to complain about the lack of depositions in this matter, Best-
Again, the Court notes that Best-Lock's counsel previously went so far as to argue that
it could fulfill the requirements of its equitable estoppel defense on the record that existed prior
to any of the current discovery disputes. Doc. 120 at 2.
To the extent the other discovery requested by Best-Lock regarding its equitable
estoppel defense is relevant to creating a genuine issue of fact as to the arguments Lego has
actually made, it appears to the Court that this information would primarily reside with BestLock. Lego's Motion for Partial Summary Judgment asserts that Best-Lock must show that Lego
intentionally mislead Best-Lock in order to succeed on one element of equitable estoppel. Lego
Motion for Partial Summary Judgment Br. at 26-29. Such conduct by Lego would have to be
known to Best-Lock according to Lego.
Lock Reconsider Br. at 4, but fails in its affidavit to request any specific depositions, or to explain
how any depositions could lead to information sufficient to create a genuine issue of material fact,
which is to say, material to the particular issues presented by this Motion.
Best-Lock argues that in connection with its Motion to Dismiss it has "proffered evidence
of numerous deficiencies in Lego's discovery responses and failures to produce documents." BestLock Emergency Motion Br. at 3. Although this may be true, Best-Lock's Motion to Dismiss was
filed prior to Lego's Motion for Partial Summary Judgment. The Court will not construe those
arguments as providing evidence of what discovery Best-Lock still requires to respond to a laterfiled motion. See Lunts v. Rochester City Sch. Dist., 515 F. App'x 11, 13-14 (2d Cir. 2013)
(summary order) (holding that a sworn affidavit did not meet the requirements of Rule 56(d)
"because it contained only conclusory allegations of incomplete discovery," and declining to
construe as a Rule 56(d) affidavit a letter more completely detailing assertions written prior to the
filing of a summary judgment motion). That declination is particularly appropriate in the case at bar,
where Lego's Motion for Partial Summary Judgment is narrowed in its application to only one of
its claims and to several of Best-Lock's affirmative defenses and counterclaims based upon similar
facts. Best-Lock's demands are not directed in any way to the arguments in Lego's Motion for
Partial Summary Judgment, and fail to consider what Lego has alleged and assumed for purposes
of that Motion.
Finally, Best-Lock argues that this Court noted in its prior Ruling addressing the preliminary
injunctions sought by Best-Lock and Lego that it was unable to discern whether Best-Lock
unreasonably delayed in filing this action until further discovery was completed. Best-Lock
Emergency Motion Br. at 3-4. However, Best-Lock reads more into that statement than it can
sensibly carry, the consequence of Best-Lock's ignoring the grounds on which Lego has actually
sought partial summary judgment. The Court made that statement in the context of addressing BestLock's laches defense, which at the time the Court regarded as possibly applicable to copyright
actions. Lego's Motion for Partial Summary Judgment asserts only that Best-Lock's laches defense
fails now entirely because the doctrine is not applicable to this case according to Petrella, an
intervening Supreme Court decision. Lego Motion for Partial Summary Judgment Br. at 21. It is
unclear then how further discovery as to whether Lego unreasonably delayed in filing this action
would preclude summary judgment in its favor, given Lego's purely legal argument.17
The Court will not deny Best-Lock relief altogether. Rule 56(d) is intended as a safeguard
against premature grants of summary judgment and should "generally be applied 'with a spirit of
liberality.'" Riley, 44 F. Supp. 2d at 459 (quoting 10A Charles A. Wright & Arthur Miller, Fed.
Prac. & Proc. § 2740, at 532 (2d ed. 1983)). Best-Lock has essentially alleged that it has been
unable to take or receive any significant discovery at this point in the litigation relevant to its own
Counterclaims and affirmative defenses. In responding to Lego's Motion to Reconsider, Best-Lock
states that it has been unable to obtain discovery on numerous issues related to Lego's Motion for
Partial Summary Judgment, including those related to the essence of this litigation, the infringement
of the copyrights.18 Best-Lock Reconsider Br. at 4-8.
The Court recognizes that its prior statement regarding discovery also applies to the
first element of Best-Lock's equitable estoppel defense. As stated earlier in this Part of the
Ruling, Lego's Motion for Partial Summary Judgment assumes that Best-Lock could create a
genuine issue of material fact on this element, but nevertheless argues that Lego is entitled to
summary judgment because Best-Lock cannot meet the other required elements of the defense.
Again, however, Best-Lock does not explain what specific discovery it requires and
how that would assist it in responding to Lego's current Motion for Partial Summary Judgment.
Without such information, the Court cannot determine a course going forward or permit BestLock additional discovery. The Court takes care to note that Best-Lock cannot seriously allege
that no discovery altogether in this case has occurred. Lego has responded in full and in good
faith to each of Best-Lock's discovery requests.
In addition, the unique circumstances and procedural posture of this action require an
appropriate remedy. There is no operative scheduling order in place for this litigation. The earlier
scheduling order contained deadlines which passed long ago, and that order has never been amended
by the parties or the Court. The Court did grant the parties certain extensions on responding to
discovery in 2015, Docs. 124, 127, but there was no formal end date for the close of discovery that
Best-Lock was aware it would be held to, nor was a date set for the filing of dispositive motions.
The Court is not aware of a single deposition that has been taken in this litigation. Both parties had
reached an impasse in responding to each other's discovery requests in December 2015. The parties
essentially stopped communicating for a period of at least three months immediately thereafter.
Given the alleged lack of discovery that has occurred, the lack of an operative scheduling
order, and the significant delays in this ongoing litigation, the Court will deny Best-Lock's
Emergency Motion, without prejudice to Best-Lock refiling a revised motion and supporting
affidavit, whose purposes must be to explain with precision the discovery Best-Lock is entitled to,
and why Best-Lock requires that discovery in order to be able to respond to Lego's Motion for
Partial Summary Judgment.19 Best-Lock is reminded that the discovery it is seeking must be
relevant to Lego's Motion for Partial Summary Judgment. If the requested discovery is not tailored
to Lego's Motion, the Court will again deny Best-Lock's Motion, this time in plenary fashion, and
Lego's Partial Summary Judgment will proceed for adjudication. The Court, it will be appreciated,
Best-Lock also asserts that Lego's Motion for Partial Summary Judgment is somehow
procedurally improper because it was made without notice to Best-Lock and because Best-Lock
should be able to cross move at the same time as Lego. Best-Lock Emergency Motion Br. at 1,
4. The Court finds no merit in either argument. Summary judgment motions may be made at
any time unless otherwise specified by the Court. Fed. R. Civ. P. 56(b). Best-Lock points to no
rule requiring it to be able to cross move for summary judgment at the same time as Lego and the
Court is aware of none. Moreover, Best-Lock may still cross move for summary judgment
should it desire to do so.
intimates no present view as to the resolution of that Motion.20
For the foregoing reasons, the Court makes this Order:
The Motion of Defendant Best-Lock [Doc. 128] to Dismiss the Second Amended
Complaint of Plaintiffs Lego for failure to prosecute the action is DENIED.
The Motion [Doc. 137] by Lego to Reconsider is GRANTED.
The Emergency Motion of Best-Lock [Doc. 135] is GRANTED, to the extent that
proceedings under Lego's Motion for Partial Summary Judgment [Doc. 130] are STAYED pending
the Court's further Order, and DENIED WITHOUT PREJUDICE in all other respects, which is
to say, without prejudice to refiling motion papers by Best-Lock in a manner consistent with this
Ruling and Order.
If Best-Lock decides to refile its Motion, as permitted by Paragraph 3 of this Order,
Best-Lock must file that additional motion, in a form consistent with this Ruling, by February 7,
2017. Lego may file opposing papers by February 21, 2017. Best-Lock may file reply papers by
February 28, 2017.
If Best-Lock does not file an additional motion in accordance with Paragraphs 3 and
4 of this Order, it must file its opposition to Lego's Motion for Partial Summary Judgment by
February 7, 2017. Lego may file reply papers by February 21, 2017. If the Court desires oral
argument on either of these motions, Best-Lock's potential motion pursuant to Rule 56(d) or Lego's
Lego makes a cursory assertion in a footnote that Best-Lock's motion is procedurally
improper "as a Rule 56(d) motion" as it is "in the incorrect form." Lego Reconsider Br. at 1 n.1.
It is unclear to the Court what Lego means by this statement and Lego does not elaborate further.
In any event, because the Court is denying Best-Lock's Emergency Motion it need not address
Lego's cursory argument.
pending Motion for Partial Summary Judgment, counsel will be advised.
In these circumstances, discovery will be STAYED pending this Court's resolution
of Lego's pending Motion for Partial Summary Judgment.
The foregoing is SO ORDERED.
Dated: New Haven, Connecticut
January 18, 2017
/s/ Charles S. Haight Jr.
Charles S. Haight, Jr.
Senior United States District Judge
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