Samad Brothers, Inc. v. Bokara Rug Co. Inc
Filing
139
OPINION AND ORDER re: 102 MOTION for Sanctions (Corrected) filed by Samad Brothers, Inc. and 105 MOTION Objection to Magistrate Judge's Order of February 10. Defendants' objection to the Magistrate Judge's January 24,2011 o rder [Docket No. 105] is overruled. Defendants are directed to produce, in accordance therewith, the 199 copyright deposit photographs covering rug designs from India and Pakistan. Plaintiff's motion for sanctions and contempt [Docket No. 102] is denied. (Signed by Judge John F. Keenan on 9/19/2011) (cd)
Case 1:09-md-02013-PAC Document 57
Filed 09/30/10 Page 1 of 45
USDC SDNY
DOCUMENT
ELECTRONICALLY FILED
DOC #: _________________
DATE FILED: 9-19-11
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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SAMAD BROTHERS, INC.,
:
UNITED STATES DISTRICT COURT
:
SOUTHERN DISTRICT OF NEW YORK
Plaintiff,
:
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::
No. Civ. 7831 (PAC) (JFK)
In re FANNIE MAE 2008 SECURITIES
08 09 Civ. 5843
-against::
LITIGATION
09Opinion (PAC) Order
MD 2013 and
::
BOKARA RUG CO., INC., JAN
::
OPINION & ORDER
SOLEIMANI, and GABRIEL VAKNIN,
:
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:
Defendants.
:
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APPEARANCES: PAUL A. CROTTY, United States District Judge:
HONORABLE
For Plaintiff:
Mark S. Kaufman, Esq.
KAUFMAN & KAHN, LLP
BACKGROUND1
The early years of this decade saw a boom in home financing which was fueled, among
For Defendants:
Jura C. Zibas, Esq.
other things, by low interest rates and lax credit conditions. New lending instruments, such as
Scott M. Smedresman, Esq.
WILSON ELSER MOSKOWITZ EDELMAN & DICKER, LLP
subprime mortgages (high credit risk loans) and Alt-A mortgages (low-documentation loans)
JOHN F. KEENAN, United States District Judge:
kept the boom going. Borrowers played a role too; they took on unmanageable risks on the
Before the Court is Bokara Rug Co., Inc. (“Bokara”), Jan
assumption that the market would continue to rise and that refinancing options would always be
Soleimani, and Gabriel Vaknin’s (collectively “Defendants”)
available in the future. Lending discipline was lacking in the system. Mortgage originators did
objection to Magistrate Judge Fox’s order directing Defendants
not hold these high-risk mortgage loans. Rather than carry the rising risk on their books, the
to produce 304 copyright registration photographs. In addition,
originators sold their loans into the secondary mortgage market, often as securitized packages
Samad Brothers, Inc. (“Samad Brothers” or “Plaintiff”) moves for
known as mortgage-backed securities (“MBSs”). MBS markets grew almost exponentially.
sanctions and contempt against Defendants for failing to produce
But then the housing bubble burst. In 2006, the demand for housing dropped abruptly
these photographs. For the reasons that follow, Defendants’
and home prices began to fall. In light of the changing housing market, banks modified their
objection is overruled and the Magistrate Judge’s order is
lending practices and became unwilling to refinance home mortgages without refinancing.
affirmed. Plaintiff’s motion for sanctions and contempt is
denied.
1
Unless otherwise indicated, all references cited as “(¶ _)” or to the “Complaint” are to the Amended Complaint,
dated June 22, 2009. For purposes of this Motion, all allegations in the Amended Complaint are taken as true.
1
1
I.
Background
Familiarity with the facts and procedural history of this
case is presumed.
Briefly, Samad Brothers is in the business of
importing and selling rugs.
(Third Am. Compl. ¶ 5).
Samad
Brothers alleges that Defendants have infringed twenty-five
copyrighted rug designs which were created by S.N. Kapoor
Exports and Jain Carpets and subsequently assigned to Samad
Brothers.
(Id. ¶¶ 16-18).
As this lawsuit involves copyrighted rug designs, documents
alone may not establish whether Bokara has imported or sold
infringing rugs.
A visual inspection of Bokara’s inventory
proved necessary in order to determine whether rugs with
different identifying names or numbers nonetheless bear the same
design as Samad Brothers’ rugs.
Thus, Samad Brothers has
repeatedly sought photographs of Bokara’s rugs throughout
discovery; of particular relevance to the instant dispute, Samad
Brothers requested that Bokara produce copies of all 304 of its
copyright registrations as each registration includes a deposit
copy image of the copyrighted design.
A subsequent request for
documents specifically focused on copyright registrations for
two Bokara rug designs designated “JB7” and “Magnolia P” that
Samad Brothers independently identified as being substantially
similar to its own copyrighted designs.
2
On November 15, 2010, Defendants objected to Plaintiff’s
requests for the JB7 and Magnolia P registrations as vague,
overbroad, unduly burdensome, and irrelevant.
(Declaration of
Mark S. Kaufman (“Kaufman Decl.”), Ex. D-8 at 8).
Defendant
simultaneously certified, in accordance with the Magistrate
Judge’s direction, that it had conducted a diligent and
reasonable search for all documents in its custody or control
responsive to Plaintiff’s requests.
(Kaufman Decl., Ex. F).
On November 16, 2010, the Magistrate Judge held a
conference to address numerous discovery disputes between the
parties, including the dispute regarding production of copyright
registrations.
Initially, the Magistrate Judge noted:
“The
request . . . as I read it, was for all copyright registrations.
I see no reason for the defendant to provide all copyright
registrations that they have.
You [Plaintiff] have focused in
the writing on, now two that you say are linked to designs
involved in this action.
all registrations.”
That’s very different from asking for
(Declaration of Jura Zibas (“Zibas Decl.”),
Ex. 3, Nov. 16, 2010 Tr. at 6).
The Magistrate Judge then went
on to referee the dispute with respect to those two specific
copyright registrations.
Caught in the middle of a he said-she
said argument, the Magistrate Judge accepted Defendants’
certification that they had provided all discovery.
(Kaufman
Decl., Ex. D-7, Nov. 16, 2010 Tr. at 21-22 (“I can’t go to the
3
defendant’s inventory and document and determine for myself that
everything has been given over or has not.
I think we’re at the
point where the defendant’s representation that it has given
over everything stands.”)).
On November 18, 2010, three days after certifying that
their production was complete and two days after the conference
with the Magistrate Judge, Defendants produced to Plaintiff the
previously withheld copyright registration photograph for the
JB7 design.
Suspecting that Defendants had not conducted as
thorough a review of their documents as represented, Samad
Brothers deposed Mr. Soleimani and Mr. Vaknin, the two
individual defendants, and Mr. Lew, their assistant, about their
efforts to search for photographs of Bokara’s rugs.
Mr.
Soleimani and Mr. Vaknin each testified that they did not look
for photographs, but instructed Mr. Lew to do so.
(Kaufman
Decl., Ex. D-4, Soleimani Depo. Tr. at 72-74; Kaufman Decl., Ex.
G-B, Vaknin Depo. Tr. at 238-41).
However, when asked, “Did you
look for photographs among the deposit copies of the copyright
[registrations] filed by Bokara?”
negative.
Mr. Lew responded in the
(Kaufman Decl., Ex. G-A, Lew Depo. Tr. at 261).
In a letter dated December 3, 2010, Plaintiff informed the
Magistrate Judge of its belief that Defendants’ response to
discovery requests was incomplete because Bokara employees did
not review the company’s 304 copyright registrations – a “key
4
source” of potentially responsive photographs.
Ex. D).
(Kaufman Decl.,
On January 24, 2011, the Magistrate Judge held another
conference to address the discovery disputes renewed by
Plaintiff’s letter.
He ruled:
I want to turn first to . . . the plaintiff’s December
3, 2010 letter.
. . .
Turning to the discovery matters that the plaintiff
claims are really evidence of deficiencies in the
responses made to the plaintiff discovery demands it
does not appear to me that there was a search,
certainly not an adequate search, for photographs
generally. And specifically, photographs that are
part of the registrations for rug designs. And I
think that the defendants have to do such a search and
produce whatever photographs they have generally, and
specifically, the photographs that are attached to the
registrations.
The testimony by defendants’ representatives really
amounts to a finger-pointing exercise, each claiming
either he doesn’t have responsibility to look for any
photographs, or any other documents, or believes
somebody else was doing it on behalf of the
defendants.
Let me turn to one of the registrations that was
disclosed, JB7, after there was a certification that
the defendants had made a complete disclosure or
production of materials to the plaintiff. How is it
that that registration came to be uncovered and
surrendered in the face of a certification that that
production was complete?
(Kaufman Decl., Ex. A, Jan. 24, 2011 Tr. at 3-5).
After the January 24, 2011 conference concluded,
Plaintiff’s counsel sent a letter to defense counsel summarizing
his understanding of the Magistrate Judge’s directives.
5
At the
top of the list, counsel wrote:
“It does not appear that
defendants searched for photos generally or for photos that were
part of copyright registrations.
Defendants must engage in a
search for photographs, and, at a minimum, shall produce deposit
copies of all of Bokara’s copyright registrations.”
Decl., Ex. H).
(Kaufman
In a letter dated February 1, 2011, Defendants
informed the Magistrate Judge again that they believed they had
previously satisfied Plaintiff’s request for photographs related
to designs in the lawsuit.
(Zibas Decl., Ex. 6).
Then, on
February 7, 2011, Defendants sent another letter to the
Magistrate Judge requesting “clarification” of the Judge’s
January 24, 2011 ruling regarding production of copyright
registration photographs – namely, Defendants requested that the
Judge clarify whether he intended to require Bokara to produce
all 304 copyright registrations or only the JB7 and Magnolia P
registrations.
(Zibas Decl., Ex. 7).
On February 10, 2011, the
Magistrate Judge endorsed Bokara’s letter as follows:
As directed on January 24, 2011, the defendants must
produce to the plaintiff, expeditiously, the 300
photographs that are part of the defendants’ rug
design copyright registrations. The defendants shall
also produce to the plaintiff, expeditiously, any
other photographs in their possession, custody and
control related to the rug designs pertinent to this
action.
(Zibas Decl., Ex. 8).
On February 23, 2011, Defendants filed
objections to what they call the February 10, 2011 order.
6
II.
A.
Discussion
Objections to the Magistrate Judge’s Order
This Court reviews a Magistrate Judge’s non-dispositive,
discovery ruling pursuant to Rule 72(a) of the Federal Rules of
Civil Procedure.
Under Rule 72(a), a court must “modify or set
aside any part of the order that is clearly erroneous or is
contrary to law.”
Fed. R. Civ. P. 72(a).
“A finding is
‘clearly erroneous’ when, although there is evidence to support
it, the reviewing court on the entire record is left with the
definite and firm conviction that a mistake has been committed.”
Nikkal Indus., Ltd. v. Salton, Inc., 689 F. Supp. 187, 189
(S.D.N.Y. 1988) (quotation omitted).
This is a highly
deferential standard, and “[t]he party seeking to overturn a
magistrate judge’s decision thus carries a heavy burden.”
U2
Home Entm’t, Inc. v. Hong Wei Int’l Trading Inc., No. 04 Civ.
6189, 2007 WL 2327068, at *1 (S.D.N.Y. Aug. 13, 2007).
Rule 72(a) provides an aggrieved party with fourteen days
to object to a magistrate judge’s non-dispositive order, and
“[a] party may not assign as error a defect in the order not
timely objected to.”
Fed. R. Civ. P. 72(a).
An oral order can
trigger the fourteen-day window for filing objections.
See
Scharff v. Claridge Gardens, Inc., No. Civ. 2047, 1990 WL
186879, at *7, (S.D.N.Y. Nov. 21, 1990).
7
1.
Timeliness of Objection
The parties dispute whether Defendants’ time to object
began to run on January 24, 2011 – the date of the Magistrate’s
oral order – or on February 10, 2011 – the date of the
Magistrate’s written clarification.
Defendants argue that the
January 24, 2011 date should not govern because the Magistrate’s
oral order was unclear and it contradicted his November 16, 2010
statement that he saw “no reason for the defendant to provide
all copyright registrations that they have.”
The January 24, 2011 oral order, particularly when
considered in context, is clear.
The Magistrate specifically
stated that he wanted to discuss Plaintiff’s December 3, 2010
letter, and that letter requested that Defendants be “compelled
to produce, at minimum, all registrations and deposit copies.”
(Kaufman Decl., Ex. D at 4).
With respect to that application,
the Magistrate spoke broadly of the inadequacy of Defendants’
search for photographs “generally” as well as for “photographs
that are part of the registrations for rug designs.”
Initially,
the Court notes that nowhere in this colloquy is there reference
to any subset of Bokara’s copyright registrations.
Additionally, Defendants produced copyright registrations for
the JB7 and Magnolia P designs - the two designs Plaintiff had
previously requested by name - prior to the January 24, 2011
conference.
It is unlikely that the Magistrate would criticize
8
Defendants’ search with respect to documents that had been
located or that he would direct production of documents that had
already been produced.
Nor did the Magistrate Judge issue contradictory orders.
The November 16, 2010 ruling was based on the Magistrate’s
acceptance of what appeared to be a good faith representation
that all relevant evidence had been produced.
When new
information came to light indicating that counsel’s
representation was less than accurate, the Magistrate revised
his discovery ruling accordingly.
Moreover, even if Defendants
were confused about the scope of the Magistrate’s discovery
order, they had sufficient time prior to the expiration of Rule
72(a)’s fourteen day window to request clarification from the
Court.
The substantive ruling to which Defendants object was
issued on January 24, 2011.
Defendants’ objections, filed 30
days later, are therefore untimely under Rule 72(a).
2.
Clear Error
Even if the Court were to accept Defendants’ objections out
of time in the interest of justice, it would find no error in
the Magistrate’s January 24, 2011 order.
Defendants argue that
the January 24, 2011 order is clearly erroneous because:
(1)
Plaintiff can obtain the photographs from public records; and
(2) the 304 copyright deposit images are not relevant and unduly
burdensome to produce.
9
With respect to Defendants’ first claim of error, there is
nothing in the record to suggest that Defendants argued to the
Magistrate Judge that all copyright deposit copies are publicly
available.
As the Magistrate Judge could not consider an
argument not presented to him, the public nature of copyright
registrations does not provide a basis for overruling the
January 24, 2011 order.
Cf. Ortiz v. Barkley, 558 F. Supp. 2d
444, 451 (S.D.N.Y. 2008) (when reviewing objections to a
magistrate’s report and recommendation “a district court
generally should not entertain new grounds for relief or
additional legal arguments not presented to the magistrate”).
Regardless, the fact that Plaintiff might be able obtain
copyright registrations, for a fee, from the United States
Copyright Office or the Library of Congress does not relieve
Defendants of their discovery obligations.
Under Rule 34(a) of
the Federal Rules of Civil Procedure, a party may request
production of various items “in the responding party’s
possession, custody, or control.”
Bokara has registered 304
copyrights for rug designs. (Declaration of David Lew (“Lew
Decl.”) ¶ 2).
One hundred ninety-eight of these copyrights
cover rug designs from India, one hundred five copyrights cover
rug designs from China, and the remaining copyright concerns one
rug design from Pakistan.
(Id. ¶ 3).
Defendants now concede
that they have photographs of 157 of the rugs designed in India.
10
(Id. ¶ 4).
Defendants also state that they have negatives which
may contain images of the remaining 41 Indian rug designs and
the Pakistani rug design.
(Id.).
Although Defendants claim
that they do not maintain copies of their own registrations for
the 105 Chinese rug designs, Plaintiff agrees that those designs
are not likely to be relevant to the Third Amended Complaint and
no longer seeks their production.
(Pl. Mem. at 14).
As the 199
requested copyright registrations are in Defendants’ custody and
control, regardless of the fact that they may also be publicly
available, the Magistrate did not clearly err in ordering their
production.
Nor did the Magistrate err in directing production of all
of Bokara’s copyright deposit images over Defendants’ cries of
undue burden.
Although the parties engage in an extensive
debate about the relative costs of obtaining deposit copies from
the Copyright Office, the plain fact is that the requested
Indian rug photographs are in Bokara’s New Jersey offices.
According to Defendants, they would need “to utilize 5 to 7
hours of labor of gathering the [157 images of Indian rug
designs] and then taking them to an outside vendor over 4 miles
away from the office,” with an estimated cost to Bokara of
$1,489.00.
(Lew Decl. ¶ 4).
Production of the remaining
photographs from negatives is estimated to cost $30 to $40 per
image.
(Id.).
Defendants claim that this effort and expense is
11
unduly burdensome in light of the limited relevance of the
majority of the photographs to those designs identified in the
Third Amended Complaint.
The January 24, 2011 order may require a certain amount of
over-production.
However, Defendants’ track record demonstrated
to the Magistrate that they could not be relied upon to perform
a diligent search for photographs on their own.
Cf. Kaufman
Decl., Ex. C, June 30, 2010 Tr. at 9 (granting Plaintiff’s
application under Rule 34(a)(2) to enter Bokara’s warehouse and
inspect rugs because defense counsel “indicated to me it’s an
onerous task your client doesn’t want to undertake to look for
these rugs.
So the plaintiff has agreed, or has determined, it
will look for the rugs itself”).
Thus, the Magistrate Judge
reasonably concluded that the best way to ensure that Plaintiff
receives responsive photographs is to allow Plaintiff to review
all copyright deposit images for itself to determine which, if
any, are substantially similar to Samad Brothers’ designs.
Bokara could have reviewed its own copyright registration
photographs but did not, and simultaneously asserted that its
document production was complete; therefore, any burden
occasioned by the Magistrate’s order is self-inflicted.
For the same reason, Defendants’ request that the Court
order Plaintiff to pay copying costs for each of the 199
copyright registration photographs is denied.
12
The Court does
not believe cost-shifting is appropriate where Defendants’ own
conduct compelled the Magistrate Judge to order a more extensive
production of copyright registration images than what he
previously thought necessary.
Cf. Quinby v. WestLB AG, 245
F.R.D. 94, 104-05 (S.D.N.Y. 2006) (holding that a party which
creates its own discovery burden should not be allowed to shift
the cost of undoing that burden to its adversary).
However,
both sides acknowledge that not every photograph will depict a
rug similar to Samad Brothers’ copyrighted designs.
The Court
sees no reason why the parties cannot work out an arrangement
whereby Plaintiff could inspect the 199 original file
photographs and negatives, and Defendants would only reproduce
copies of those photographs identified as responsive.
The Court
leaves those details to the parties, but strongly encourages
Plaintiff to conduct this additional discovery in the most cost
effective way possible.
As noted above, Plaintiff no longer seeks production of the
105 copyright registration deposit copies concerning rug designs
from China.
Thus, the Magistrate Judge’s January 24, 2011 order
is modified to require production of the 198 registrations for
rug designs from India plus the registration for the rug design
from Pakistan.
As there is no error in the Magistrate’s
discovery ruling, the Court notes that this modification is
ordered pursuant to Plaintiff’s consent, not Rule 72(a).
13
The
Court expects review and production of the 198 copyright
registration photographs to be complete within one month of the
date of this order.
B.
Plaintiff’s Motion for Sanctions and Contempt
Plaintiff’s response to Defendants’ objection to the
January 24, 2011 order was to file a motion for sanctions and
contempt under Rules 37(b) and 70(e) of the Federal Rules of
Civil Procedure.
Specifically, Plaintiff argues that, as a
result of Defendants’ failure to produce the copyright
registration images at issue, it is entitled to an adverse
inference that the photographs include designs that are
substantially similar to Samad Brothers’ rug designs.
Alternatively, Plaintiff seeks production of such photographs
“expeditiously” and monetary sanctions in the amount of $2,000
for each day from January 28, 2011 until production is
completed.
Plaintiff also seeks its costs and attorney’s fees
for this motion.
In their opposition, Defendants cross-move for
sanctions against Plaintiff based on the filing of a frivolous
motion for sanctions.
1.
Contempt
In its reply memorandum, Plaintiff requests leave to
withdraw the contempt portion of its motion so that the issue of
sanctions can be heard by the Magistrate Judge.
application is denied.
That
If the motion is referred back to the
14
Magistrate, it is inevitable that someone will object to his
ruling no matter what it is; there is no reason to further delay
these tortured proceedings with two rounds of motion practice on
a discovery dispute.
“A court’s inherent power to hold a party in civil contempt
may be exercised only when (1) the order the party allegedly
failed to comply with is clear and unambiguous, (2) the proof of
noncompliance is clear and convincing, and (3) the party has not
diligently attempted in a reasonable manner to comply.”
N.Y.
State Nat’l Org. for Women v. Terry, 886 F.2d 1339, 1351 (2d
Cir. 1989); see also Paramedics Electromedicina Comercial, Ltda.
v. GE Med. Sys. Info. Tech., Inc., 369 F.3d 645, 655 (2d Cir.
2004); Perez v. Danbury Hosp., 347 F.3d 419, 423-24 (2d Cir.
2003).
Where a party is found to be in contempt of a court
order, the court may impose coercive and/or compensatory
sanctions against the contemnor in the form of a fine.
See King
v. Allied Vision, Ltd., 65 F.3d 1051, 1062 (2d Cir. 1995).
Although, as discussed above, the Court finds that the
Magistrate’s January 24, 2011 oral order was not ambiguous,
Plaintiff has not submitted clear and convincing evidence of
Defendants’ noncompliance or demonstrated Defendants’ lack of
diligence.
While Defendants’ contention that they misunderstood
the scope of the Magistrate’s January 24, 2011 ruling does not
carry the day, it is at least colorable.
15
Moreover, Defendants
are entitled to object to a Magistrate Judge’s discovery order
and are generally not required to comply with that order while
the objection is pending.
It is Defendants misfortune that the
time for objecting expired on the same day as they sought
clarification of the order; however, the fact that Defendants
waited two weeks before sending the February 7, 2011
clarification letter does not demonstrate their unwillingness to
comply with the Magistrate’s order.
That being said, should
Defendants fail to produce discovery in accordance with today’s
order, they are on notice that the Court will revisit the issue
of sanctions and contempt.
As the Court is not inclined at this
time to declare Defendants in contempt of the Magistrate’s
discovery order, Plaintiff’s request for contempt sanctions of
$2,000 per day is denied.
2.
Discovery Sanctions
For many of the same reasons, discovery sanctions are
unwarranted.
Rule 37(b)(2)(A) of the Federal Rules of Civil
Procedure provides that where a party “fails to obey an order to
provide or permit discovery, . . . the court where the action is
pending may issue further just orders.”
Available sanctions
include directing that a disputed fact has been established,
precluding evidence, and striking pleadings.
37(b)(2)(A)(i)-(vii).
Fed. R. Civ. P.
“[D]istrict courts possess ‘wide
discretion’ in imposing sanctions under Rule 37.”
16
Shcherbakovskiy v. Da Capo Al Fine, Ltd., 490 F.3d 130, 135 (2d
Cir. 2007) (quoting Daval Steel Prods. v. M/V Fakredine, 951
F.2d 1357, 1365 (2d Cir. 1991)).
The Court’s discretion in
selecting an appropriate sanction is guided by a number of
factors, including:
“(1) the willfulness of the non-compliant
party or the reason for the noncompliance; (2) the efficacy of
lesser sanctions; (3) the prejudice to the other party; (4) the
duration of the period of noncompliance; and (5) whether the
non-compliant party had been warned of the consequences of his
noncompliance.”
Handwerker v. AT & T Corp., 211 F.R.D. 203, 208
(S.D.N.Y. 2002); see Agiwal v. Mid Island Mortgage Corp., 555
F.3d 298, 302–03 (2d Cir. 2009).
Plaintiff suggests an adverse inference as an appropriate
sanction for Defendants’ failure to produce all of its copyright
deposit copies.
show:
The party seeking an adverse inference must
“(1) that the party having control over the evidence had
an obligation to timely produce it; (2) that the party that
failed to timely produce the evidence had ‘a culpable state of
mind’; and (3) that the missing evidence is ‘relevant’ to the
party’s claim or defense such that a reasonable trier of fact
could find that it would support that claim or defense.”
Scott
v. City of N.Y., 591 F. Supp. 2d 554, 565 (S.D.N.Y. 2008)
(quoting Residential Funding Corp. v. DeGeorge Fin. Corp., 306
F.3d 99, 107 (2d Cir. 2002)).
17
Prior to the January 24, 2011 conference, Defendants were
not required to turn over Bokara’s entire inventory of copyright
deposit photographs.
Rather, the Magistrate Judge ordered that
Defendants produce all copyright registration photographs only
after he determined that Defendants had not properly conducted
searches for relevant photographs.
While they did not timely
object to the January 24, 2011 oral order, neither did
Defendants engage in willful conduct with the goal of delaying
the litigation.
Defendants have never received a warning from
the Court that their failure to produce all copyright
registrations would result in sanctions.
Although Plaintiff’s
counsel argues that he personally warned Defendants of their
contempt, these repeated threats via email are better
characterized as evidence of the parties’ enmity than the type
of fair notice the law contemplates.
Moreover, as summary
judgment briefs have not yet been submitted, Plaintiff has
suffered minimal, if any, prejudice as a result of the delay in
document production.
None of the factors listed above indicate
an immediate need for an adverse inference or other discovery
sanctions.
It would seem that requiring Defendants to produce
199 copyright registration photographs is a sanction in and of
itself.
The Court would take this opportunity to note that the
parties’ incessant bickering is unprofessional and has
18
exponentially prolonged these proceedings.
It seems that every
disagreement necessitates a letter application or motion.
See,
e.g., Samad Bros., Inc. v. Bokara Rug Co., Inc., No. 09 Civ.
5843, 2010 WL 5094634 (S.D.N.Y. Dec. 13, 2010) (overruling
objection to denial of motion for leave to amend the Third
Amended Complaint); Samad Bros., Inc. v. Bokara Rug Co., Inc.,
No. 09 Civ. 5843, 2010 WL 5095356 (S.D.N.Y. Dec. 13, 2010)
(overruling work product protection applied to third-party
documents); Samad Bros., Inc. v. Bokara Rug Co. Inc., No. 09
Civ. 5843, 2010 WL 5094344 (S.D.N.Y. Nov. 30, 2010) (denying
Plaintiff’s motion to quash third-party subpoena); Samad Bros.,
Inc. v. Bokara Rug Co., Inc., No. 09 Civ. 5843, 2010 WL 2835754
(S.D.N.Y. June 30, 2010) (granting Plaintiff’s motion for leave
to file a third amended complaint).
In fact, between March 2
and March 18, 2011, the Court received no less than ten
unsolicited letters from the parties, with as many as three
letters in one day.
Neither party is blameless in this conduct,
and it will no longer be tolerated.
The parties are hereby
directed to confer and diligently work to resolve discovery or
any other issues before threatening sanctions and running to the
Court for judicial intervention.
In the end, the conduct that precipitated the sanctions
motion is Defendants’ untimely objection to the Magistrate’s
ruling.
Given the behavior of both sides and the procedural
19
history of this case, the Court finds that sanctions are not
appropriate at this juncture.
sanctions are denied.
Thus, both part
J
requests for
Plaintiff's request for fees and costs
related to this motion is denied.
III.
Conclusion
Defendants' objection to the Magistrate Judge's January 24,
2011 order [Docket No. 105] is overruled.
Defendants are
directed to produce, in accordance therewith, the 199 copyright
deposit photographs covering rug designs from India and
Pakistan.
Plaintiff's motion for sanctions and contempt [Docket
No. 102] is denied.
SO ORDERED.
Dated:
New York, New York
September 19, 2011
G~c' 7:~L,,"",,.J
~
John F. Keenan
United States Dist ct Judge
20
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