U.S. Games Systems, Inc. v. Agm Aktiengesellschaft Muller Urania et al

Filing 72

ORDER re 68 MOTION For Issuance of a Letter of Request for Judicial Assistance Under the Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters filed by Agm Aktiengesellschaft Muller Urania, Konigsfurt-Urania Verlag Gmbh, Cartamundi NV Signed by Judge Stefan R. Underhill on 1/29/2016. (Oliver, T.)

Unitocl $tnt,en tJlttrici Ç.*+tf
n ;$'{ri ct of üc i'l'rltôtir;u t
FILED
EFIIüSIiTÛNT

AT

UNTTED STATES DISTRICT COURT
F'OR THE
DISTRICT OF' CONNECTICUT

lb
ã1 z!

U.S. GAMES SYSTEMS, INC.

Plaintiff,

Case No. 3: l5-CV-00025-SRU

-against-

AGM AKTIENGË,SELLSCHAFT MULLER
URÁ.NIA" KÕNTGSFURT-URANTA VËRLAG
GMBH, aNd CARTAMUNDI NV,
Defendants.

LETTER OF REQUEST FOR
INTERNATIONAL JUDTCTAL
ASSISTANCE PURSUANT TO TIIE
HAGUE CONVENTTON OX'18
MARCH 1970 ON THE TAKING OF
EVIDÐNCE ABROAD IN CIVIL OR
COMMERCIAL MATTSRS

AGM AKTIENGESELLS CHAFT MULLER
URANIA,
Counterclaim Plaintiff
-againstU.S. GAI\,ÍES SYSTEMS, INC., STUART R.

KAPLAN TRUST FUND, ANd STUART R.
KAPLAN as TRUSTEE of the STUART R.
KAPLAN TRUST FLIND,
Counterclaim Defendants.

The United Staæs Distríct Court for the District of ConnecÉicut presents its compliments

to the High Court of Justice, Queen's Bench Division and requests international judicial
assisfånce purs¡¡ant
,4,broad

to the Hague Convention of 18 March 1970 on the lakíng of

in Cívi! or Commercial Matters to obtain testimonial and

Evidence

documentary evidence from

The Random House Group Límited, a Penguin Random House Company, 20 Vauxhall Bridge
Road, l,ondon

SWIV 2SA, England, U.K., to be used ¿t trial in the above-captioned civil action

(the "Lawsuit").

{l } ló6685;6}

l.

Sender
The Honorable Stefan R. Underhill
I*Inited States Ðistrict Judge

United States District Court for the Ðistrict of Counecticut
915 Iafayetie Boulevard - Suite 411
Bridgeport, Connectícut 06604
Urrit€d States of Amorica

2.

Central Authoríty of the Requested St*te
The SeniorM¿ster
For the attention of the Foreign Process Section

RoomEl6
Royal Courts of Justiee
Snand

LONDOI.{ 'WC2A 2LL, England, U.K.

3.

Person to whom the executed request fs to be returned

Mr. Stephen Silverman
OGR Stock Denton LLP
WinstonHouse
349 Regents Park Road
LondonN3 lDH, England, U.K.
Tel. [phone]
Fax+M (0)20 8346 2000
SSilverlr¡an@ o gsto skdsnf on. oom

4,

Speciffcation of the date by which the requesting authoríty requires receþt of
the response to the Lctter of Reguest

D*te: As soon

as reasonablypracticable consistent

.,

with the Court's calendar.

SECTION

II

IN CONFORMITY \ryITH ARTICLE 3 OF'THD COFTVENTTON, TrrE UNDERSIGNED
APPLTCANT HAS THE HONOR TO SUBMIT THE FOLLOWING REQUEST:
5.

{.

Requesting judicial euthoríty (Article 3, a)
United States Distict Court for the District of Connecticut
915 I-afayette Boulevard * Suite 4l I
Bridgeport, Connecticut 066tA
Udted States of Ame¡ica

b.

To the competent authorit5r of (Article 3, a)
THE UNITED KINGDOM OF GREAT BRITAIN AND NORTHERN
IRELAND

c.

Name of the case and any identifying number:
U.S. Gømes SysÊems, Inc. v. AGM Alaiengesselschaft Muller UrØtìø, et al.,
Case No. 3:15-CV-00025-SRU, United States Ðistrict Court fbr the Dist¡ict of
Connecticut.

6,

Names and ¡ddresses of the parties and their representatives (including
representatives in the requested state) (Article 3, b)

a. Plaintiff
Pl ai nti

ff

l, Çou nterclpi m,D ef-e¡dant

Reprçse¡t?tives
Barbar¿ J. Lipshutz, Esq.
Jacobs & Burleigh LLP
1290 Avenue ofthe Americas, 30th Fl
NewYork,NY 10104

U.S. Games Systems, Inc.
179 Ludlow Street
Stamford, CT 06902
United States of America

United States of America
Tei: (212) 207-87&7
Fax: [phone]
bil@j acobsburlei gh. com
Carole R. Bernstein, Esq.
[¿w Ofüces of Carole R. Bernsteín
4T Maple AvenueNorth
'Westport,
CT 06880

United States of America
Tel: [phone]
Fax: [phone]'135
cbemsteines o (E. qmail. com

J

DefgdanlCo.pnterplaim Piajnti ff

&eI¡.Tesentativps

AGM Ak:tiengesselschaft Muller
Urania

Delfon L. Vandever, Esq.
Windels Marx Lane & Mittendorq LLP

B¿hnhofsbaße 21
CH-82I2 Neuhausen am Rheinfall
Switzerland

1-s6 W. est 56th SFeet

New York, NY 10019
United Statos of Ameríca
Tel: (212) 23'"1-1116
Fux: [phone]
dvandever(âwindelsmarx.com
James

T. Shearin, Esq.

Pullman & Comley, LLC
850 Main Sfreet
Bridgeport, CT 06601
United States of America
Tel: [phone]
Fax: [phone]
ì tshearin@,pullcsm.com

Mr. Stephen Silverman
OGR Stock Denton LLP
Winston House
349 Regents Park Road
London N3 lDH, England, U.K.
Tel, [phone]
P¿¡ [phone]
S S i lverman(Ð-o grstockdentofi. çofn
Defendant

Renresentatives

Köaigsfurt-Urania Verlag GmbH
Königsfurt 6,24796
Krummwiseh, Gormany

Delton L. Vandever, Esq.
Windels Marx Lane & Mittendotf,LLP
156 West 561h Sheet
New York, NY 10019
United States of America

Tel: (212)237-rÍ16
Fax: [phone]
dv.an dev er@.wi udelsF ar{,com

{ I I 166685;6}

4

James T. Shearin, Esq.

Pullman & Comley, LLC
850 Maín Street
Bridgeport, CT 066t1
United States of America
Tel: [phone]
Fax: [phone]
i tshearín@¡ ullcom,com

Mr. Stephen Silverman
OGR Stock Denton LLP
Winston House
349 Regents Park Road
LondonN3 lDH, Englan4 U.K.
Tel. [phone] s470
Fax +44 (û)20 8346 2000
S S ilvennan@o grstockdenton-com
Resrqsentätives
Delton L. Vandever, Esq,

Windels Marx l¿ne & Mitæntlorl LLP
156 lflest 561h Street
New York, NY 10019
United States of America

Tel; (212\237-tll6
Fax: [phone]
dvandever(Ð windelsmarx. com

T. Shearin, Esq.
Pullman & Comley, LLC
850 Main Street
Bridgeport, CT 06601
United States of America
Tel: (203) 330"224A
Fax: [phone]
i tshearin(Dpulleom. com
James

Mr. Stçhen Silverman
OGR Stock Denton LLP
Winston House
349 Regents Park Road
LondonN3 IDI{, Englutd, U"K.
Tol. [phone]
Fax [phone]
S Siivemran@oÊrstockdenton.com

{

n r 66685ú}

(

c.

Other parties - "A,dditional Counterclaim Defendants
Counterclaim Ðefendant
Stuart R. Kaplan Trust Fund and
Stuart R Kaplan as Trustee of
the.Str¡art R Kenla¡ Tnrsf F'r¡n¡l

2l Verplank Avenue
Stamford, CT 06902
United States of Amerioa

Rep,rqsentatives
Ba¡bara J. Lipshutz, Esq.
Jacobs & Burleigh LLP

!290 A.¡enue of &e Arnericas,
New York, NY 10104
United States of America
TeL Q12\ 207-8787
Fax [phone]
bjl@j acobsburlei gh.corn

-10th F'l

Cade R. Bemstein, F.sq.
Law Offices of Carole R. Bernstein

4l Maple AvenueNorth
Wesþort, CT 06880
United States of America

Tel: [phone]
Fax: [phone]
cb

ernsteinesq(ô. grnail. com

7.

a.

Nature of the proceedings (Article 3, c)

Civil lawsuit alleging breach of contraet with respect to a copyrigþt licensing agreement,
an alleged trademark licensing agreement, and an alleged agreement to transfer tradem¿rks.

b.

Summary of complaint

Plaintiff U.S. Games S-vstems, Inc. ("USGS') is a card and game publísher loeal,cel in the

United States. Defendants are ,AGM Aktiengesselschaft Muller Urania ("AGM"), a Swiss
publisher and former printer; Kõnigsfurt-Urania Veilag GmbH ("Kôngisfufr"),

â

German

publisher; and Caftamundi NV ("Cartamundi"), a Belgian printer and publisher. Plaintiff alleges

in its Amended Complaint that, "[a]pafi from the United States, where USGS o\ryns â copyright
in the images appearing on the Rider-Waite ta¡ot cards, andthe United Kingdom, USGS holds an
exclusive license to the copynght ín the images appearing on the face of the Rider-Waite tarot
cards throughout the

{1llõ6685:6}

world." (Am. Compl. lJ 13.) In the course of discovery, Plaintiffsubmitted

6

verified interrogatory answers stating that

it

obtained the exelusive lieense from Ebury

Press/Century Hutchinson (Ptaintiff and Additional Counterclaim Defendants' Objections and
Responses

to First Set of Interrogatories at Response Nos. tr and 6), whích are Random House

entíties.

Plaintiff also alleges in its Amerrded Complaint that "[o]n or about January 1,

1983

USGS and AGM entered into an agfeement (the 'Copyright License') pursuant to which USGS
granted AGM a non-exclusive license

throughout the world except in

üo

manufacture, sell and disfibute Rider-Waite t¿rot cards

Nofh America." (Am. Compl.

I

15.) Plaintiff further

alleges

that "[t]he royalty statements provided by AGM and Kônigsfuit to USGS have not been
complete or accurate,

in lhat such statemenæ fail to account for all decks or other materials sold

*AGM and
by AGM using the Rider*Waite copyrighted images" (Am. Compl. ï 6l) and that
Königsfurt willfully failed to pay royalties on the sales of the ISA Tarot cards and the T¿rot
Karten as required under the Copyright Licenseo' (Am. Compl, '.ll 64). Plaíntiff claims that
defendants thereby breached the Copyright License (Am. Compl. Count

non-disclosure

(Am. Compl. Count II), and committed negligent

nondisclosure (Am. Compl. Count

c,

Summary of defense and counterclaim

of contruct, fraud by nondisclosure, or

negligent misrepresentation by nondisclosure. (Ans. to Am" Compl.
asserÈ

misrepresentation by

II|.

Defendants deny that they committed breach

Königsfurt

I), committed ftaud by

fI

81-103') AGM

and

that they have Rot paid royaltíes on the sales of ISA Tarot and Tarot-Karten

decks because those decks are outside the scope of the Copyright Lícense. (A.ns. to Arn. Compl.

Ill

63-64, 122.) f:n this regard, defendants contend that the Copyright License applies, if at all,

only to sales of a deck meated in 1971 (the "1971

{ I I 1ó6685:6}

7

Deckoo) that was

derivsd from preexisting tarot

card designs conceived by A.E. Waiæ and painted by Parnela Colman Smith that were fìrst
published

in

1909 (the "1909 Ðeck") and are now in the public domain and does not encompass

the 1909 Deck and all versions of the 1909 Ðeck as implied by plaintiff's allegations,

In addition, defendants contend that the Copynght License is unenforceable because the
tarot card designs are in the public domain. (Ans. to Am. Cornpl. T 121.) Defendants aÏso allege
that,

"þJy its

determined

express terms, the royalty under the Copyrigþt License is payable only

if

USGS is

to be legally bound to pây the same royalty rate to its licensor¡' and, "upon

information and belief, there h¿s been no such legal deternrination." (Ans. to Am" Compl, $

L26,) Further, defendants counterclaim for a return of all amounts paid under the Copyright
License

if it is found

d.

to be invelid or unenforceable. (Aas. ro Am, compl.

1Í11

li3-156.)

Other neces$ary information or documents

The Random House Group Limited, the company sought to be examined and from which

the specified documents wíll be sought, is a publisher in the U.K. and belíeved by defendants to
be the specific R¿¡dom House entity that claims to hold the copyright, alleged to be exclusively

iicensed to USIJS,

in the i9U9 Deck tiuough a chain of title deriving from A.E, V/aite.

Ðçfendants originally sought to srrhpoena Penmìn Random House LI-C, a United States enfity,

but state that the Executive Vice President and General Counsel of Penguin Random House

LtC,

K¿therine J. Trager, ¿dvised them that the U.S. company had no involvement or

knowledge of the facts givíng ríse to the lawsuit and suggested to them that the ínfonnation be
sought from Random House in the U.K. via the Hague Convention. (See

Defendants fi¡¡fher contend that Random House

Exhibit

1, attached.)

(or its egenÐ has had substantial

communications with A.E. 'Waite or representatives or beneficiaries of his estate, including the

U.K. Public Trustee, Sybil Waite, and J.D. Semken, with USGS, with AGM, and with others
concenring the 1909 Dcek or its images and the 1971

I

Deck. GeC Schedule C,

attached.)

Defendants state that, upon writlen request to Windels Matrc [,ane
56th Street, New York,

NY

& Mittendorf, LLP, 156 West

10019, United States of America, Attn. Delton Vandever, they

will

provide to The Random House Group Limited or tho Court at Defendants' cost a copy of such
correspondence and agreements known to Defendants.
8.

a.

EvÍdence to bc obtained or other judicial act to bc performed
(Article 3, d)

The evide¡rce to be obtained is for r¡se at trial of the l¿wsuit, and consists of (i) oral
testimony vía one or more natural persons who are designated by The Random l{ouse Group

Limited as having sufficient knowledge and being of suit¿ble position to testifu on its beh¿lf

to all information known or

reasonably available

to The Random House Group

as

Limited

regarding the deposition topÌcs set forîh in Schedule A, attached, and (di) documents from The
Random House Grcup Lirnited responsive to the requests for speoific documents set forth in
Schedule B, attached.

b.

Purpose ofthe evidence orjudicial act sought

The evidence to be obtained is for use at trial of the Lawsuit. Defendants state that they

wísh to use the evidence to be obtained from The Random House Group Limited to establish
their defense at trial of this Lawsuit that Plaintiffis not entitled to the royalties it seeks under the
Licensing Agteement on the grounds, among others, that Random House did not hold or transfer
any valid copyright in the 1909 Deck to USGS, that the precondition was not met that USGS be
determined

to be legally obligated to pay the royalty under the Copyright License to

Random

House, and that the Copyright License encompasses only the 1971 Deck that was created by

AGM in conjunction with Random House and USGS.

I

SECTION

9,

III

Identity and address of any person to be examined (Article 3, e)

The Random House Group Limited,

A Penguin Random House Compan¡ 20 Vauxhall

Bridge Road, London SWIV 2SA, England, U.K. shall designate one or more natural persons of
sufficient knowledge and suitable posítion to testify on its behalf as to all inforrnation known or
reasonably available to The Random House Group Limited regarding the topícs for examination
set forth

in Schedule A, hereto. The individual wiftess or r¡titnesses designated by The Random

House Group Limited shall have direct knowledge of the facts on which testimony is sough! or
knowledge obtained through inquiry ofthose having direct knowledge and ofrelated documents.

put to the persons to be examined or statemcnt of the subject
maffer about which they are to be examined (Article 3, f)

10. Questions to be

Sçe Schedule

11. Ðocuments

A, attached.

¡nd related property to be inspected and copied (Á,rticle 3, g)

See Schedule

B, attached.

The docurnents and other related property necessary to understand the contents of the
documents and fi¡Ifill the obligations of ¿nswering the questions set forfh in Schedule
A, hereto, insofar as they re¡nain in the power, custod¡ or control of The Random
House Group, Limited, are to be prodr,rce.d fbr ínspeotion and cop/ng et Deftndsnts'
cost and for use in the lawsuit by:
The Random House Group Límited
A Penguin Random House Company
20 Vauxhall Bridge Road
London SWIV 2SA, England, U.K.

12. Ãny requirement that the evidence be given on oath or affirmatÍon rnd any
specinl form to be used (Article 3, h)

It is

requested that the testimony be taken on notice before a per$on authorized to
admilrister oaths in the place in which the examination is held, either by the law
thsreof or by the law of the United States. In the event that the evidence cannot be
taken in the manner requested, it is to be taken in such nranner as provided by local
iaw for the fonnal taking of evidence.

t0

L3. Special methods or procedure to be followed (e.g. oral or Ín

writing, verbatim,

transcript or summary, cross-exâmÍnation, etc.) (Articles 3, Í and 9)
The examination shall be taken under the Federal Rules of Civil Proeedure for the
United States District Couß, except to the extent such procedure is incompatible
with the intemal laws of England and Wales The testimony shall be given orally and
is subject to cross-examination and re-direct cxamination. The testimony shall be
transcribed ve¡batim and shall be recorded by audiovisual means. In the event that the
evidence cannot be taken in the manner requested, it is to be taken in such manner as
provided by local law for the fonnal taking of evidence. Ðocuments shall be
produced as they are kept in the usual course of business or must be organized and
labsled to correspond to the requests set forth in Schedule B, attached hereûo.
Electronicalty stored information shall bç produced in a reasonably usable form.
14. Request for notification of the time and place for the execution of the Request
and identþ end address of any person to be notified (Artiele 7)
Please

notify the following persons of the time and place for the execution of the

Request:

Mr. Stephen Silverman
OGR Stock Denton LLP
Winston House
349 Regents Park Road

l.ondon N3 1DH, England, U.K.
Tel. +M {0)2o E349 5470
Fax[phone]
S S ilverman (Do grsto gkdenton. çom
Ðelton L. Vandever, Esq.
Windels Max l¿ne & Mittendorf,LLP
156 V/est 56tl'Street
New York, NY 10019
United States of America
Tel: [phone],f6

Fax (212)262-f2ls
dyaqd everl4Wiq4ç! qmq¡t,

co"

m

T. Shearin, Esq.
Pullman & Comley, LLC
850 Main St¡eet
Bridgeport, CT 0ó601
United States of Amerioa
Tel: [phone]
Fax; (203) s76-8888
i tshearintÐnu llcom.com
Jzutres

{l I l6668sr6l

il

Jacobs & Burleigh LLP
1290 Avenue ofthe Americas, 30th Fl.
New York, NY 10104

lJnite¡l States of Ameritn
[phone]
Fax: [phone]
þìl@j aqoþsburlei glì.som

Tel

Carole R. Bernstein, Esq.
Law Offices of Carole R, Bemstein
41 MapleAvenue North

ïVestporf, CT 06880

United States of America
Tel: (203) 2s5-8698
Fax; (203) 2594735
cbemsteiqçSg@ Bmail co"qÌ

The Random House Grcup Limi:ed,
A Penguin RandomHouse Company
20 Vauxhall Bridge Road
l¡ndon SWIV 2SA, England, U.K.
Attn: Ofñc.e of General CounsEl

for ¿ttendance or partÍcÍpation of judicial personnel of the requesting
*uthority at the execution of the Letter of Request (Article 8)

15. Request

No attendance of ludicial personnel is requested. Under the Federal Rules of Civil
Procedure for tlre United States District Courts, depositions may be taken and
clocumç,nfs may he reqttested and produced without involvement of judicial
personnel.
16. SpecÍficatÍon of privilege or duty to refuse to give evidence under the law of the
St¡te of origin (Article 11, b)

The privilege or duty of the wihess to refuse to give evidence shall be the same as if
they were producìng documenfs or testi$ing under the applicable provisions of the
Federal Rules of Civil Procedure for the United St¿tes District Courts, including
giving such evidenee would disclose a privileged attorney-client communication or

if

would require production of tangible things that were prepared in anticipation of
litigation or for trial by the person or its representative.

{I

I l666fl5:6)

Í2

¡nd costs incuned whlch are reimbursable under úhe second puagraph
of Artisle 14 or under Ârücle 26 of the Convontion will be borne by

17. The fees

/s/ Stefan R. Underhill
I'NITED STATES

'I

SCHEDULE Ä

(Ðraremen. ur lne ùuDJect Nlailer upon whrcn wrtness'l'o l'e ß.;xâmrneoj
Defendants shall depose in person The Random House Group Limited via one or more
natural persons who are designated by The Random House Group Limited as having sufficient
knowledge and being of suitable position to testiff ou its behalf as to all informatíon known or
reasonably a-vailable to The F-andom Hotrse Grnrrn T imite¡f re.r¡nrdina fhê frì|Iõwinc áenncirinn
topics:

l.

Each basis for the contention by Randorn House fhat A.E. 'lVaite commissioned the 1909
Deck or its images from Pamela Colman Smith.

2.

Ëach basis for the eontention by Random House that A,Ë. Waite held or had sufficient rights,
intercsts, or title in the cop¡'right in the 1909 Ðeck or íts images as of the date of his death.

3.

Random House's knowledge conceming tho creation and authorship of the 1909 Deck or its
images, and the basis of its knowledge.

4.

The claims by Random House that it acquired copynght interests in the 1909 Deck or its
images from A,E. V/aite or representatives or beneficiaries of Mr. Waíte's estate, including
the nature, basis, and duration ofeach such copyright interest clainred to have been acquired.

5.

Random House's publications or republícations of the 1909 Deck or its images.

6.

The claimed licenses or other agreements between Random House and A.E. WaitE or ¿ny
rçresøntative or beneficiary of Mr. Waite's estate concerning a copyright lnærest in the
1909 Deok orits images.

1,

Ttie claimed licenses or other agreements bctween Random House and USGS conceming a
copynght interóst in the 1909 Ðeck or its images.

8.

Random House?s contended chain of title of the conwisht in the 1909 Ðeck or its irnaqes.

9.

Royalty reporting and payments received by Random House from USGS concerning AGM
sales of the so-called "Rider Waite Tarot Deck.'o

10. Communications between Random Houss (or its agent) and A.Ë. Waite or any representative
or beneficiary of his estatE conoerning copyright interests in the 1909 Deck or íts images or

tbe 1971 Deck.

{or its agent) and USGS (or its agent) eonceming
copyridlt interests in the 1909 Dect or its irnages or conceming the 1971 Deck.

11. Communications between Random House

(or its agent) and AGM (or its agent) concerning
copynght interests in the 1909 Deck or its images or concerning the 1971 Deck.

12. Communications between Random House

13. Randonr House's knowledge coneerning the creation and publishing of the 1971 Deck.

t4

SCHEDULE B
(List Of Documents To Be fnspected And Copied)

The Random House Group Limited shall produce for inspection and eopying at
Defendants' cost and for use in the l¿wsuit the following documents and other related property
insofar as tÏrey romain in the power, custody, or control of The Random House Group Lirnited:
1^ The documents supporting Random llouse's contention that A.Ë. V/aite commissioned the
1909 Deck or its images from Pamela Colman Smith.

2.

The documents sup'porting Random House's contention that A.E. lVaite owned a copyright
interest in the 1909 Deck ¿t the time of his death.

3.

Each license and agreement between Random House and A.E Waite or any reprcsentative or
beneficiary of his estate that assígns, transfers, o¡ licenses a copyright intprest in the 1909
Deck to Random House, and that was in effect at any time during the period from January l,

l97l ùothepresent.

4. Each license and agreement between Random House and USGS that assigns,
licenses a copynght interest irr the 1909 Deck to USGS, ¿nd that was
during the period from January l,l97l to thc present

trânsfers, or

in effect at any time

5.

The documents supporting Random House's contention that it acquired copyright interests in
the 1909 Deck or íts images frorn A.E. Waite or represeritâtive$ or bencficiaries of his estate.

6.

Each document purporting to søt forth a chairr of title of the copynght inthe 1909 Deck.

7. The loyalty statemçnts received by Random House from USGS conceming
*Rider-W¿ite
so-called

AGN4 sales of the

Tarot Ðeck" for anyperiod from Jantrary 1, 1983 to the present.

8.

The correspondence between Random House (or its agent) and USGS (or its agent)
concerning copyright interests in the 1909 Deck or its images or conceming the 1971 Deck
from January 1, I97l to the present.

9,

The correspondence between Random House (or its agent) and A.E Waite or representatives
or benefìciaries of his estate concerning copytight interests in the 1909 Ðeck or its images or
concerning the 1971 Deck.

10.

The correspondence between Random House (or its agent) and AGM (or its
conoerning copyright interests in the 1909 Deck of its images or concerning the

15

l97l

agent)

Deck.

-

T[

SCHEDTILE C

ÄfifÃgieè-meiatsl

Upon written request to Wíndels Mant Lane & Mittendorf, LLP. 156 V/est 56th Sfeet,
New York, NY 100i9, United States of America, Attn. Delton Vandever, Defendants will
provide to The R-¿ndom Hotlse Group Limited or tlre Court at Ðefendants' cost a ôn.w nf rhe
following Random House conespondence and &greements known to Defendants:

1.

1970s Correspontlenee : (a) lettets or telexes f,rom Stuart Kaplan of USGS to iohn Robirson
of Raudom House dated January 13 and 21, L97I; April ? and 13, l97l; June 3, 1971; July
30, I97l;August3,6, I8,and23, 1971;Septomber30, 1971;Decemberl4arrd23,19711
Lpnl27,1972; August 10,1972; December 4,1972; January 29,1973; March 21,1973;
April 3, 1973; June 5,1973; Octobsr 2,|973;November 6,1973; January 21,t974; February
2Q,1974; March 15,1974; May 8, 1974; A.ugust l, 1974; September 5,l9'l4;November 21,
l9?4; and January 29,1975; (b) letters or telexes from fohn Robinson of Random House to
Stuart Kaplan of USGS dated lvlatch 16, 1977; April 1 and 6, 1971; June 7 and'i7 , l97l;
July 29, l97l; Septembet 6, I97l1' January 5,7972; February 4, 10, and 2&,1972; April 5
and 241972; August l, 1972; December tl,l972;May22,1973; October ll, 1973;
Novernber 12, 1973; December 4,1973; January 25" 1974; September 13,1974; October 17,
1974; and January 20,1975; (c) letter from John Robinson of Random House to Sy'bil V/aite
dated ^April 7,l97l; (d) letters fiom Sybil Wâite to John Robinson of Random House dated
April 20, l97l and September 23,1971; (e) letters from John Robinson of Randorn tr{ouse to
Edwin Nigg of AGM dated September 6,1971and August 31, 1973; and (f) letter from
Grahame Griffiths of Random House to Stuart IGplan of USGS dated March 29, L978.

2.

A memorandum of agreement between the U.K. Public Trustee and Rider & Co. dated April
16, 1973,

3.

1980s Correspondence: (a) letters from Susanna Yager, Brian Perman, and 1or Oliver
Caldøcott of Random Housc dated Ðecember 11, 198û; January 14,26, and 27,1981',
December I8 and 19,I986; and Septembet23,1987; (b)letters from Stua¡t Kaplan of LJSGS
dated December I l, 1980; December 18, 1980; Septernber 8, 1982; and (c) lelters from
Defendants dated January 7, 1981.

4.

1990s and 2000 Correspondencel (a) lette¡s or faxes frorn Tessa Strickland, RobeÊ Gwyn
Palmer, or Julian Shuckburgh of Random Houso dated July 10, 1990; October 24,1990;
April30, 1991; October25,1991; October3l, 199.1;February3,1992; Mareh 18, 1992;
Aprif 9, t992; Apri\22,l993;October9,7997; May7, 1999;and Íune21,,2A00:(b) letters
or faxes from Stua¡l Kaplan dated July 17, fig}; September 24,7990; February 28,7991;
October 25, 1991; October 28, I99l; Januaty 14,1992; February 5, 1992; March 9, Í992;
April 9, 1992; January 26,1993; Aprjl 23, 1993; May 10, 1993; and May 24,1993', (c) lettcrs
or faxes from Afihur Jacobs daûed April 16,1992;May 12,1992;lvlay 14,1992:May 22,
1992; and June 19, 1992; (d) letters or faxes fiom Denton Hall Eurgin &'Warrens dated

Febnrary 21,1992; Ma¡ch 17 and3l,1992; April 28, 1992;May l5, 19921 June Iû, 1992;
and July 3, 1992: (e) letters from Fred Weber of AGM dated Mareh 4, lgg2; April7 f992;
^

III

ll:ó685:6)

l6

and May 12, 1992; and (f) a letter from Clifford Chanco on behalf of Carlton Books dated
Septerriber 30, L997.

5.

A memorandum of understanding between Ebury Press and USGS signed on May 24,1993.

6. 2003 and 2004 Correspondence:

(a) lotters, faxes, or e-mails from Stuart Kaplan or Bobbie
of U.S. Games daþd March 5,2003; iÙlay 12,2003; June 9 and 10,2003; November
Bensaid
26,2Û}3;February 19,Zùt{'and Maroh 11 and 26,2004; (b) leüers, faxes, orç-mails from
Michelle Bruchez of Random House or Simons Muirhead & Burton as counsel for Random
House dated Maroh 1 I and 1,7,2003;April 15, 2ffi3; May 9 and 28, 2003; June 9, 10, L2,
ând I ?, Z0O3; and Octobor 7 , 14 and 2I , 2003; (o) letter from J. Ð. Semken dated lr4ay 3 l,
2003; (d) letters from Jacobacci &Assocíati as counsel for Lo Scarabeo dated June 27,2003;
October 15,2003; and March 26,2004; and (e) email fiom Max Ruegg of AGM dated
December 12,2403.

7.

201I Correspondence: (a) letter from Vanessa Milton of Random House dated October 26,
201.1; ånd (b) letter from Jacobacci as counsel for Lo Scarabeo dated Novernber 2,2011.

8.

An agenda and notes regarding a meeting or meetings between or amongst Random House
and USGS in or about January 1992 conceming the 1909 Deck.

(1

1

166ó85:61

l7

EX}IIBTT

{1

1170662:1}

1

November 10,2015

Bv Email grrdHp¡rd Delivery
ÐeltonVandevçr, Esq.
Windels Marx Lane & Mittcndorf. LLP
156 Wcst Sd Street,22nd FIr.
Nerv Yorlç New Yor*. 1001 9

Re:

U.S, öames Systems" Inc, v. AGM A}:tiengesselschaft

MuÏlqUrania, etal.
Cívil Action No. 3 : I 5-CV.ú0025"8RIJ
Dear Mr. Vandeverl

In connection with the zubpoena to testi$t recørtly served qpon Penguin
R¿ndom,House LLC, this is to confirm our priot phone conversation andrequest
that you withdrawthe subpoena. As I,explained to yotr" Peng¡¡inRarrdorn Howe
LLC and Penguin Random Horise,[fd,a¡e two separête, independent oompanies;
Penguin Random Hause LLC {'|LLC') is ilcorporate.d i¡ Delawa¡e, has its
pritrcþal placæ of business ir New York artd is owned 53% by Beftelsmann and
47%by Pearson. Penguin Random House Ltd ("Ltd') is a company incorporated
urrder the laws ofEngland and has its principal place of businessin
England. While Ltd is also s\¡med by Bertelsman¡l and Pearsorl, in the same
porcentages, the officers aud management of thc tlro companies are completely
diffe¡ent, with the exceptionof hda¡kus Dohleo who is ths CEO of both
companies. (Mr; Dohle has no knowledge offhe facts uuderlyingthis dispute, and
could ãot testÍry with any knowledge at a deposition in this seseJ
The twc companies conducttheir day to day business operatioas
completely separateln do not cantrol each otberrs dayto day aetivities, or havÞ
access to each otlrer's docurnonJs in üe,ordinary pourss of,busíness. Uuder
símílar facts, the courLs have quashed subpoenas für dosumpnts and tcstimony. ln
Llnde v, Arøb Bank,262 F.RD, 136 (EDNY ?009), for example, the Courtfound
thatthe ptaintiffs suþoenalo thc defendad's U,S. affitiaie failad bççai¡sc,
despite coÍffnon ownenhip, fhe two entities observed corporate for¡nalities and
the parent oompany did not conüol the mæketing and operatiotral.policies of the
subsidiary hor have accsss to its documents in the ordinary coun¡e of business.
Horc, y.su âre nöt.oven tnlkÍng abouf a paront-s¡tbsidiary relatíonship, but rather an
affiliate relationshíp, and neither contpsnycontrols ttre activities o-f thc
Kalhelno J.

lrager

Er€culiv.è V¡c€ PrÊs{tienl, General
PeñoülnRandom flous€

LLC

Counaet

1745 Bþedr¡ðy, New Yortt; N¿,¿
P

212?g?gl3.7

t'ork

F 21276Zf,4.$A

klrager@pengu¡ñ¡andomhouse.com

10019

In r.e l¡tvçndt lÍntversal S,A, S¿e. Llrlg. 2009 \¡/L 8588405
'
(SDltY 2009), (ruliug thatplaintitrs f,ailed to mcet their burdert of showing that
U,S, ontifyhad praotical abitþto obtaln documents from foreigp affiliæe).

oflrer.

See ølso

Here, LLChas no involwment in or ksowletlge of the faets giving rtse irq
the above-captioneil litigation. For these tea3ons, your subpoene is üôt
mforceab,le. Accordiugþ, I would suggest that if you u/arit to obtain the testirnony
of an officor of Ltd that you proceed according to the rules of the Haguç
ConVention.
$inoeroly,

J

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