Payton v. Defend, Inc.

Filing 106

ORDER Granting in Part and Denying in Part Motion for Sanctions and Denying Motion For Summary Judgment Based On Alleged Lack Of Damages Motion for Partial Summary Judgment. "Defendants motion for sanctions 85 is granted in part and denied i n part. The court declines to dismiss the case or award fees and costs. However, Payton is ordered to supplement his discovery responses no later than October 26, 2017. Payton must also attend in person a status conference followed by a depositi on in the federal courthouse in Honolulu beginning at 9:00 a.m. on November 6, 2017. Payton must pay the court reporter fees associated with that deposition, as well as the court reporter fees for the previous deposition that he failed to attend. I f Payton fails to attend the status conference and deposition, the court will dismiss this action with prejudice. Defendants motion for summary judgment 86 based on an alleged lack of damages is denied. The hearing on Defendants second motion f or summary judgment, ECF No. 96 , is continued to December 11, 2017, at 9:45 a.m." Signed by JUDGE SUSAN OKI MOLLWAY on 10/17/17. (cib, )CERTIFICATE OF SERVICEParticipants registered to receive electronic noti fications received this document electronically at the e-mail address listed on the Notice of Electronic Filing (NEF). Participants not registered to receive electronic notifications were served by first class mail on the date of this docket entry. 10/17/17 - Copy of order emailed to Plaintiff Keoni Payton @ [e-mail]

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF HAWAII
KEONI PAYTON,

)
)
Plaintiff,
)
)
vs.
)
)
DEFEND, INC., and MICHAEL
)
BUNTENBAH aka MIKE MALONE,
)
)
Defendants.
)
_____________________________ )

CIVIL NO. 15-00238 SOM/KSC
ORDER GRANTING IN PART AND
DENYING IN PART MOTION FOR
SANCTIONS AND DENYING MOTION
FOR SUMMARY JUDGMENT BASED ON
ALLEGED LACK OF DAMAGES

ORDER GRANTING IN PART AND DENYING IN PART MOTION
FOR SANCTIONS AND DENYING MOTION FOR
SUMMARY JUDGMENT BASED ON ALLEGED LACK OF DAMAGES
I.

INTRODUCTION.
This case involves alleged copyright infringement.

On

June 1, 2017, Magistrate Judge Kevin S.C. Chang determined that
Plaintiff Keoni Payton’s answers to discovery were insufficient
and that he had failed to attend his scheduled deposition.
Magistrate Judge Change ordered Payton to appear for a deposition
in Hilo, Hawaii, within 30 days, with Payton being responsible
for paying the court reporter’s fees.

Payton was ordered to

supplement his discovery responses no later than one week prior
to his deposition.

See ECF No. 81.

When Payton did not supplement his discovery responses,
Defendants Defend, Inc., and Michael Buntenbah cancelled the
deposition and filed the present motion for sanctions.
Defendants also move for summary judgment, arguing that Payton
cannot prove damages.

The court grants the motion for sanctions

in part and denies it in part.

The court denies the motion for

summary judgment.
II.

BACKGROUND.
On June 24, 2015, Payton filed the Complaint in this

matter.

See ECF No. 1.

It asserts claims of direct copyright

infringement (Count I), contributory infringement (Count II), and
vicarious copyright infringement (Count III).
The Complaint alleges that Payton designed and owns an
image containing a drawing of an AR-15 rifle, along with the
words “Defend” and “Hawaii”:

See ECF No. 1, ¶¶ 10-11.
Payton alleges that he designed and displayed the image
during or before 2005.

Id. ¶ 12.

In December 2014, Payton

registered the image with the Copyright Office, Registration
Number VA 1-934-173.

ECF No. 1-1 (copy of copyright

registration).
The Complaint alleges that Averi Sauders conveyed the
image to Defend, Inc., and Buntenbah even though she had no
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authority to do so.

See Complaint ¶¶ 15-16.

Payton concedes

that Saunders was his “prior business and romantic partner.”

See

Plaintiff Keoni Payton’s Responses to Defendant Defend, Inc., and
Michael Butenbah aka Mike Malone’s First Request For Answers to
Interrogatories to Plaintiff No. 8, ECF No. 85-6, PageID # 473.
On April 12, 2016, Defendants sent Payton a request for
answers to interrogatories and a request for production of
documents.

See Declaration of Counsel ¶ 3, ECF No. 85-2.

On May

24, 2016, Payton produced 285 pages of documents responsive to
the document production request.

Id. ¶ 4.

Payton answered the interrogatories.

On May 31, 2016,

Id. ¶ 5.

On June 1, 2017, Magistrate Judge Chang held a hearing
on Defendants’ motion to extend the deadline to file dispositive
motions based on Payton’s insufficient discovery responses and
Payton’s failure to attend his scheduled deposition.
81.

See ECF No.

The district judge has a recording of that hearing.

Magistrate Judge Chang determined that Payton’s responses were
incomplete and inadequate.

Magistrate Judge Chang therefore

continued the trial date and dispositive motions deadline, and
ordered Payton to appear for a deposition in Hilo, Hawaii, on a
mutually agreeable date in no more 30 days.

Magistrate Judge

Chang also required (1) that Payton pay for the appearance of the
court reporter for the previous deposition that he had failed to
appear at and for the upcoming deposition, and (2) that Payton

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supplement his previous discovery responses at least one week
before the deposition.

Payton was warned that, if he failed to

appear at the upcoming deposition, sanctions might be imposed,
which might include costs, fees, and dismissal of the action with
prejudice.
The parties agreed that Payton’s deposition would occur
on June 30, 2017, meaning that Payton’s supplemental discovery
responses were due on June 23, 2017.
ECF No. 85-2.

See Decl. of Counsel ¶ 20,

When Payton failed to supplement his discovery

responses, Defendants cancelled the scheduled deposition.

Id.

¶ 22.
III.

THE MOTION FOR SANCTIONS IS GRANTED IN PART.
Pursuant to Rule 37(d)(1)(A) of the Federal Rules of

Civil Procedure, Defendants seek sanctions for Payton’s failure
to supplement his discovery responses as ordered by Magistrate
Judge Chang as well as for his failure to timely comply with
other discovery obligations.

Specifically, Defendants seek

dismissal of this action with prejudice, as well as their fees
and costs for bringing the sanction motion.

See ECF No. 85.

Rule 37(d)(1)(A) states:
(d) Party’s Failure to Attend Its Own
Deposition, Serve Answers to Interrogatories,
or Respond to a Request for Inspection.
(1) In General.

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(A) Motion; Grounds for Sanctions. The
court where the action is pending may, on
motion, order sanctions if:
(i) a party . . . fails, after
being served with proper notice, to appear
for that person’s deposition; or
(ii) a party, after being properly
served with interrogatories under Rule 33 or
a request for inspection under Rule 34, fails
to serve its answers, objections, or written
response.
This court declines to dismiss this action at this time
pursuant to Rule 37.

Magistrate Judge Chang crafted an

appropriate order for Payton’s failure to timely supplement his
discovery obligations and his failure to attend his deposition.
That order allowed for timely discovery while preserving the
parties’ right to a trial.

This court will not revisit the

appropriateness of Magistrate Judge Chang’s order when the
parties did not timely appeal that order.

Rather than examine

discovery sanctions anew under Rule 37, the court instead
examines the current motion for sanctions based on Payton’s
failure to comply with Magistrate Judge Chang’s order that he
supplement his inadequate discovery responses and attend a future
deposition.
The Ninth Circuit has stated that district courts have
“the inherent power to sanction for: (1) willful violation of a
court order; or (2) bad faith.”

Evon v. Law Offices of Sidney

Mickell, 688 F.3d 1015, 1035 (9th Cir. 2012).

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A willful

violation of a court order sufficient to justify sanctions “does
not require proof of mental intent such as bad faith or an
improper motive, but rather, it is enough that a party acted
deliberately.”

Id.

Payton has been represented by counsel at times in this
case, including when discovery was initially supposed to be
turned over to Defendants.

However, Payton appeared pro se at

the hearing in which Magistrate Judge Chang ordered him to
supplement his inadequate discovery responses.

Payton heard

Magistrate Judge Chang tell him that he needed to supplement his
discovery responses.

Payton’s failure to supplement his

responses in light of his personal knowledge of the order
therefore demonstrates a willful violation of Magistrate Judge
Chang’s order that he supplement his discovery responses.

Payton

is here sanctioned for his willful violation of Magistrate Judge
Chang’s order.

The court, however, declines Defendants’ request

that the new sanctions include dismissal of this action with
prejudice and an award of fees and costs associated with the
bringing of the present motion.

Instead, the court gives Payton

one last opportunity to comply with his discovery obligations.
The court here adds to the discovery sanctions imposed
by Magistrate Judge Chang: First, no later than October 26, 2017,
Payton must supplement his responses to interrogatories and the
document requests.

If Payton fails to meet that deadline, then,

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unless he establishes good cause for that failure, he will be
limited at trial to introducing evidence and making arguments
based on the state of discovery as of October 26, 2017, with the
addition of only any discovery he receives from Defendants after
October 26, 2017.

In short, if Payton fails to supplement his

discovery responses by October 26, 2017, he may only introduce
into evidence at trial the materials he has previously produced
to Defendants by that date and the materials Defendants give to
him before or after that date.

He is also limited to making

arguments based on the theories and facts identified in his
discovery responses on or before October 26, 2017, or based on
discovery obtained from Defendants either before or after that
date.
Additionally, Payton must make himself available at his
own expense to be deposed by Defendants on November 6, 2017, in
the federal courthouse located at 300 Ala Moana Boulevard,
Honolulu, Hawaii

96850.

In addition to paying the court

reporter fee for the previous deposition that Payton failed to
appear at, Payton must pay the court reporter fee for the
deposition on November 6, 2017.

The fee is for the court

reporter’s appearance; the court is not requiring Payton to pay
for any deposition transcript.

Payton must travel to Honolulu at

his own expense to be deposed.

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On November 6, 2017, at 9:00 a.m., Payton must appear
before this court in person for a status conference regarding
discovery.

If Payton fails to personally appear at this status

conference, the deposition will be cancelled and this action will
be dismissed with prejudice based on Payton’s failure to
prosecute this action.

If Payton appears at the status

conference on November 6, 2017, the parties will be directed to a
room in the courthouse where his deposition will occur before a
court reporter to be hired by Defendants (but paid for by
Payton).
The hearing on Defendants’ second motion for summary
judgment, ECF No. 96 (now set for hearing on November 6, 2017),
is continued to December 11, 2017, at 9:45 a.m.
IV.

THE MOTION FOR SUMMARY JUDGMENT IS DENIED.
On July 12, 2017, Defendants moved for summary

judgment, arguing that Payton cannot prove damages.
86.

See ECF No.

That motion is denied.
A.

Summary Judgment Standard.

Under Rule 56 of the Federal Rules of Civil Procedure,
summary judgment shall be granted when “the movant shows that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.”
P. 56(a).

Fed. R. Civ.

See Addisu v. Fred Meyer, Inc., 198 F.3d 1130, 1134

(9th Cir. 2000).

The movants must support their position

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concerning whether a material fact is genuinely disputed by
either “citing to particular parts of materials in the record,
including depositions, documents, electronically stored
information, affidavits or declarations, stipulations (including
those made for the purposes of the motion only), admissions,
interrogatory answers, or other materials”; or “showing that the
materials cited do not establish the absence or presence of a
genuine dispute, or that an adverse party cannot produce
admissible evidence to support the fact.”

Fed. R. Civ. P. 56(c).

One of the principal purposes of summary judgment is to identify
and dispose of factually unsupported claims and defenses.
Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986).
Summary judgment must be granted against a party that
fails to demonstrate facts to establish what will be an essential
element at trial.

See id. at 323.

A moving party without the

ultimate burden of persuasion at trial--usually, but not always,
the defendant--has both the initial burden of production and the
ultimate burden of persuasion on a motion for summary judgment.
Nissan Fire & Marine Ins. Co. v. Fritz Cos., 210 F.3d 1099, 1102
(9th Cir. 2000).
The burden initially falls on the moving party to
identify for the court those “portions of the materials on file
that it believes demonstrate the absence of any genuine issue of
material fact.”

T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors

9

Ass’n, 809 F.2d 626, 630 (9th Cir. 1987) (citing Celotex Corp.,
477 U.S. at 323).

“When the moving party has carried its burden

under Rule 56(c), its opponent must do more than simply show that
there is some metaphysical doubt as to the material facts.”
Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574,
586 (1986) (footnote omitted).
The nonmoving party may not rely on the mere
allegations in the pleadings and instead must set forth specific
facts showing that there is a genuine issue for trial.
Elec. Serv., 809 F.2d at 630.

T.W.

At least some “‘significant

probative evidence tending to support the complaint’” must be
produced.

Id. (quoting First Nat’l Bank of Ariz. v. Cities Serv.

Co., 391 U.S. 253, 290 (1968)); see also Addisu, 198 F.3d at 1134
(“A scintilla of evidence or evidence that is merely colorable or
not significantly probative does not present a genuine issue of
material fact.”).

“[I]f the factual context makes the non-moving

party’s claim implausible, that party must come forward with more
persuasive evidence than would otherwise be necessary to show
that there is a genuine issue for trial.”

Cal. Arch’l Bldg.

Prods., Inc. v. Franciscan Ceramics, Inc., 818 F.2d 1466, 1468
(9th Cir. 1987) (citing Matsushita Elec. Indus. Co., 475 U.S. at
587).

Accord Addisu, 198 F.3d at 1134 (“There must be enough

doubt for a ‘reasonable trier of fact’ to find for plaintiffs in
order to defeat the summary judgment motion.”).
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In adjudicating summary judgment motions, the court
must view all evidence and inferences in the light most favorable
to the nonmoving party.

T.W. Elec. Serv., 809 F.2d at 631.

Inferences may be drawn from underlying facts not in dispute, as
well as from disputed facts that the judge is required to resolve
in favor of the nonmoving party.

Id.

When “direct evidence”

produced by the moving party conflicts with “direct evidence”
produced by the party opposing summary judgment, “the judge must
assume the truth of the evidence set forth by the nonmoving party
with respect to that fact.”
B.

Id.

Analysis.

Under 17 U.S.C. § 504(a), a copyright infringer is
liable for actual damages plus profits or for statutory damages.
Section 504(b) explains:
The copyright owner is entitled to recover
the actual damages suffered by him or her as
a result of the infringement, and any profits
of the infringer that are attributable to the
infringement and are not taken into account
in computing the actual damages. In
establishing the infringer’s profits, the
copyright owner is required to present proof
only of the infringer’s gross revenue, and
the infringer is required to prove his or her
deductible expenses and the elements of
profit attributable to factors other than the
copyrighted work.
Under § 504(c)(1), statutory damages are “a sum of not less than
$750 or more than $30,000” for each infringed work.

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However,

with a “willful” violation, statutory damages up to $150,000 may
be awarded.

17 U.S.C. § 504(c)(2).

Defendants seek summary judgment, arguing that the
“court record is completely devoid of information or evidence to
support claims by Plaintiff for damages” and that “there is no
evidence of damages sustained by Plaintiff.”
PageID #s 510-11.

ECF No. 86-1,

Defendants further argue that, pursuant to

Rule 37(c)(1), Payton’s failure to supplement his discovery
responses means that he “is not allowed to use that information .
. . to supply evidence on a motion, at a hearing, or at a trial,
unless the failure was substantially justified or is harmless.”
The court is unpersuaded by Defendants’ arguments and denies the
motion for summary judgment.
First, to the extent Defendants base their motion on
the argument that Payton’s failure to supplement his discovery
responses means he can present no evidence of damages, the court
is unpersuaded.

The court has earlier in this order imposed

heightened sanctions for Payton’s shortcomings in the discovery
process.

The court will allow Payton one more opportunity to

comply with his discovery obligations.
Second, § 504(c)(1) allows a copyright owner to elect
actual damages plus profits or statutory damages “at any time
before final judgment is rendered.”

This means that, even if

Payton has no evidence of actual damages or profits, Defendants

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are not entitled to summary judgment based on an argument that
Payton cannot prove such damages and profits.

Under § 504,

Payton may choose to be awarded statutory damages for any
violation of his copyright rather than actual damages plus
profits.

In his answer to Interrogatory Number 20, Payton

identified statutory damages as some of the damages being sought.
See ECF No. 85-6, PageID # 477.

The existence of statutory

damages precludes summary judgment based on Defendants’ present
argument that Payton can prove no damages.
The court notes that, in their Reply in support of the
motion for summary judgment based on damages, Defendants argue
that statutory damages are unavailable in this case because the
alleged infringement began before Payton registered his
copyright.

See ECF No. 103, PageID # 693 (citing 17 U.S.C.

§ 412); see also Derek Andrew, Inc. v. Poof Apparel Corp., 528
F.3d 696, 700-01 (9th Cir. 2008).

Under Local Rule 7.4, this

court disregards this argument because it is raised in the Reply,
not in the original moving papers.

Defendant had notice of the

statutory damages claim long before it was raised in Payton’s
Opposition memorandum, so the record establishes no justification
for Defendants’ decision to wait to address it.
Waiting until a reply to raise an argument deprives the
opposing party of notice of the argument and the opportunity to
file a written opposition to it; waiting also deprives the court

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of full briefing with respect to the argument.

As noted above,

Payton’s interrogatory answers indicated that he was seeking
statutory damages.

It was incumbent on Defendants to demonstrate

as a matter of law that statutory damages are unavailable.
Having failed to do so in the motion for summary judgment,
Defendants cannot remedy that failure by raising a known issue
for the first time in their Reply.

Even if Payton had notice

that Defendants intended to raise such a defense, Defendants, as
the movants, could not justifiably first raise the issue in their
Reply.
Third, Defendants have failed to meet their initial
burden of demonstrating that they are entitled to judgment as a
matter of law with respect to actual damages.

In the present

motion, Defendants only assume that there are no facts supporting
actual damages, but do not ground that assumption in sufficient
facts.

Absent a sufficient showing of entitlement to judgment,

Defendants cannot prevail on their motion by simply arguing that
Payton has not offered facts going to damages.

Payton had no

obligation to identify a triable issue of fact as to actual
damages if Defendants’ moving papers did not first make out an
entitlement to judgment in their favor.
Finally, damages could be established by relying on
Defendants’ profits.

That information is the kind of matter that

would be in Defendants’ possession and control, not Payton’s.

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Even though Payton may not have asked for that information in
discovery and may not currently possess that information, that
failure does not mean that he could not establish profits at
trial.

Payton could, for example, ask Defendants at trial what

their gross revenue was for a given period.

Under § 504(b),

Defendants would then have the burden of demonstrating that the
gross revenue was attributable to other factors.
V.

CONCLUSION.
Defendants’ motion for sanctions is granted in part and

denied in part.

The court declines to dismiss the case or award

fees and costs.

However, Payton is ordered to supplement his

discovery responses no later than October 26, 2017.

Payton must

also attend in person a status conference followed by a
deposition in the federal courthouse in Honolulu beginning at
9:00 a.m. on November 6, 2017.

Payton must pay the court

reporter fees associated with that deposition, as well as the
court reporter fees for the previous deposition that he failed to
attend.

If Payton fails to attend the status conference and

deposition, the court will dismiss this action with prejudice.
Defendants’ motion for summary judgment based on an
alleged lack of damages is denied.
The hearing on Defendants’ second motion for summary
judgment, ECF No. 96, is continued to December 11, 2017, at 9:45
a.m.

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No later than October 26, 2017, Defendants are directed
to submit a declaration stating the amount of the court reporter
fees for the deposition Payton failed to attend, as well as a
statement as to whether Payton has paid those fees.
The Clerk of Court is directed to send a copy of this
order to counsel of record and to Payton at [e-mail].

IT IS SO ORDERED.
DATED: Honolulu, Hawaii, October 17, 2017.

/s/ Susan Oki Mollway
Susan Oki Mollway
United States District Judge

Payton v. Defend, Inc., et al., Civ. No. 15-00238 SOM/KSC; ORDER GRANTING IN
PART AND DENYING IN PART MOTION FOR SANCTIONS AND DENYING MOTION FOR SUMMARY
JUDGMENT BASED ON ALLEGED LACK OF DAMAGES

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