A federal judge has granted the discovery motion of a an artist, who sued New York University for copyright infringement after the athletic department allegedly used the plaintiff’s drawing of a cougar on various items, including clothing and memorabilia, without the plaintiff’s consent. While granting the motion to compel, the court denied the plaintiff’s request for sanctions.
Plaintiff Ariel Fleurimond claimed she was the sole creator and copyright owner of “Orion,” which the NYU Athletic Department has used on various items, including clothing and memorabilia, allegedly without Fleurimond’s consent.
NYU had countered that the plaintiff created the drawing as an employee of the athletic department, and as such, the cougar is a “work-for-hire.”
The discovery disputes first surfaced on January 18, 2011. Less than a month later, the plaintiff’s attorney filed a motion seeking to compel production of certain documents from the defendant.
The court began its determination by reviewing Federal Rule of Civil Procedure 26(b)(1), which defines the appropriate scope of discovery. Notably, “the party seeking the discovery must make a prima facie showing that the discovery sought is more than merely a fishing expedition.” Evans v. Calise, No. 92-cv-8430, 1994 U.S. Dist. LEXIS 6187, 1994 WL 185696 at *1 (S.D.N.Y. May 12, 1994).
“Further, a federal district court may impose sanctions under Fed. R. Civ. P. 37(b), when a party fails to obey an order to provide discovery,” wrote the court, citing West. West v. Goodyear Tire & Rubber Co., 167 F.3d 776, 779 (2d Cir. 1999).
In summary, the plaintiff argued that the defendant: “(i) failed to produce an appropriate 30(b)(6) witness; (ii) failed to produce all of Plaintiff’s employment records; and (iii) failed to produce all responsive documents related to the NYU Athletic Department’s revenues,” according to the court.
The first issue to be addressed by the court was whether the defendant complied with FRCP 30(b)(6) and provided an adequate witness to testify on “the creation of the subject work that is the basis of the lawsuit, the defendant’s use of the subject work, and the defendant’s defenses in this matter.”
The court wrote that the plaintiff’s counsel “has not identified any specific type of information of which the witness had no knowledge or questions for which the witness was unable to provide a substantive answer.
“Despite the fact that the witness stated he was not prepared to testify regarding the topics as read verbatim from the deposition notice, he went on to give detailed answers to the questions asked of him. Given the fact that the Plaintiff has not cited any case law supporting her contention that the 30(b)(6) witness was inadequate, and has not given any examples of specific information that the 30(b)(6) witness was unable to provide, I do not find that any potential inadequacy in the witness’ preparation was so egregious as to warrant the imposition of sanctions.”
Next, the court turned to the plaintiff’s request for her employment records from NYU, which indicate “exactly how and what the plaintiff was paid to do as an employee.” Specifically, the plaintiff sought time sheets. The court agreed that “they could be relevant to the claims and defenses at issue. As such, the defendant is directed to produce the plaintiff’s time sheets kept by NYU payroll,” or “an affidavit explaining (1) why that is the case; (2) what steps were undertaken (and by whom) to search for those records; (3) the results of the search; and (4) when such records were in the possession, custody, and control of the Defendant and at what point they were discarded, lost or destroyed.”
Next, the plaintiff requested “revenue information” from “the sale and publication of the subject work.” At issue was the request for information about “indirect profits.
“In other words, the plaintiff appears to imply, although she does not explicitly argue, that if NYU put up a poster for a sporting event bearing the subject mark, the plaintiff should be entitled to recover all profits received as a result of that sporting event. However, courts will only allow the award of such indirect profits where the the plaintiff can show a ‘causal link between defendants’ infringement and claimed revenues.’ Mager v. Brand New School, No. 03-cv-8552, 2004 U.S. Dist. LEXIS 21686, at *11 (S.D.N.Y. Oct. 28, 2004); see also Granger v. Gill Abstract Corp., 566 F. Supp. 2d 323, 330 (S.D.N.Y. 2008) (“a plaintiff must show a ‘causal link’ between the infringement and the revenues”); Zoll v. Ruder Finn, Inc., No. 02-cv-3652, 2004 U.S. Dist. LEXIS 4129, 2004 WL 527056, at *2 (S.D.N.Y. Mar. 16, 2004) (“plaintiff must show a causal connection between the infringement and the defendant’s profits”). The plaintiff has not made any argument that there was a causal link between an alleged use of the subject mark and any general revenues of the Athletic Department such that the sought after discovery would be relevant to the plaintiff’s claims. Nor has the plaintiff cited any case law on this issue.
“Regardless, the court does not need to decide the issue of whether there is a causal link in this case because the court finds that the plaintiff did not request documents related to the athletic department’s general revenue in her discovery demands. The plaintiff’s discovery demands make a number of requests related to the defendant’s profits. However, those requests seek information directly related to the subject mark, such as ‘profits that defendant made for the publication of Orion’ and ‘gross revenues relating to the sale of publication [sic] of Orion.’ DE 54, Exhibit A. A reasonable reading of these requests does not include revenue generated by the department that has no direct relation to the use of the subject mark. If the plaintiff intended for her discovery requests to encompass a broader universe of documents, she had ample time to meet and confer with the defendant and/or serve supplemental discovery requests within the appropriate timeframe. Given the fact that discovery is closed, having been previously extended, the court will not reopen discovery so that the plaintiff may seek heretofore unrequested documents.”
Finally, the plaintiff sought production of a “branding book” or “styles guide” used by the athletic department which contains various images, including the subject work. Since the defendant had no objection to its production, the court granted the motion.
Ariel Fleurimond v. New York University; E.D.N.Y.; CV 09-3739 (ADS) (AKT), 2011 U.S. Dist. LEXIS 83288; 7/29/11
Attorneys or Record: (for plaintiff) Mona R. Conway, Conway Business Law Group, P.C., Huntington Station, NY. (for defendant) Robert William Clarida, LEAD ATTORNEY, Cowan, Liebowitz & Latman, P.C., New York, NY.
