Dr. Seuss Enterprises, L.P. v. ComicMix LLC et al

REPLY to Response to Motion re MOTION to Strike Declaration of Dan Booth MOTION to Strike Document

S.D. Cal.Jan 31, 2019

DLA PIPER LLP (US) SA N D IEG O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 REPLY ISO MOTION TO STRIKE BOOTH DECLARATION USDC CASE NO. 3:16-CV-02779-JLS-BGS WEST\285195265.1 GINA L. DURHAM (Bar No. 295910) gina.durham@dlapiper.com DLA PIPER LLP (US) 555 Mission Street, Suite 2400 San Francisco, California 94105-2933 Tel: 415.836.2500 Fax: 415.836.2501 STANLEY J. PANIKOWSKI (Bar No. 224232) stanley.panikowski@dlapiper.com DLA PIPER LLP (US) 401 B Street, Suite 1700 San Diego, CA 92101 Tel: 619.699.2700 Fax: 619.699.2701 ANDREW L. DEUTSCH (Bar No. 319286) andrew.deutsch@dlapiper.com DLA PIPER LLP (US) 2000 Avenue of the Stars Suite 400, North Tower Los Angeles, CA 90067-4704 Tel: 310.595.3000 Fax: 310.595.3300 Attorneys for Plaintiff Dr. Seuss Enterprises, L.P. Tamar Y. Duvdevani (admitted pro hac vice) tamar.duvdevani@dlapiper.com Marc E. Miller (admitted pro hac vice) marc.miller@dlapiper.com DLA PIPER LLP (US) 1251 Avenue of the Americas New York, New York 10020-1104 Tel: 212.335.4500 Fax: 212.335.4501 Ryan Compton (admitted pro hac vice) ryan.compton@dlapiper.com James Stewart (admitted pro hac vice) james.stewart@dlapiper.com DLA PIPER LLP (US) 500 Eight Street, NW Washington, D.C. 20004 Tel: 202.799.4000 Fax: 202.799.5000 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA DR. SEUSS ENTERPRISES, L.P., a California limited partnership, Plaintiff, v. COMICMIX LLC, a Connecticut limited liability company; MR. GLENN HAUMAN, an individual; MR. DAVID JERROLD FRIEDMAN A/K/A DAVID GERROLD, an individual; and MR. TY TEMPLETON, an individual, Defendants. CASE NO.: 3:16-cv-02779-JLS-BGS PLAINTIFF DR. SEUSS ENTERPRISES L.P.’S REPLY IN SUPPORT OF MOTION TO STRIKE DECLARATION OF DAN BOOTH Date: February 7, 2019 Time: 1:30 pm Courtroom: 4D Judge: The Hon. Janis L. Sammartino Case 3:16-cv-02779-JLS-BGS Document 145 Filed 01/31/19 PageID.7354 Page 1 of 9 DLA PIPER LLP (US) SA N D IEG O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF CONTENTS Page -i- REPLY ISO MOTION TO STRIKE BOOTH DECLARATION USDC CASE NO. 3:16-CV-02779-JLS-BGS WEST\285195265.1 I. INTRODUCTION ........................................................................................... 1 II. ARGUMENT .................................................................................................. 1 A. Mr. Booth Was Not Disclosed As A Fact Witness In Discovery ......... 1 B. Mr. Booth Lacks Personal Knowledge Of The Alleged Facts To Which He Testifies ................................................................................ 2 C. Mr. Booth’s Declaration Cannot Be Used To Bring Professor Gans’s Unsworn Expert Reports Into Evidence ................................... 4 D. The Legal Arguments in Mr. Booth’s Declaration Are Not Evidence, Much Less Admissible ......................................................... 5 III. CONCLUSION ............................................................................................... 6 Case 3:16-cv-02779-JLS-BGS Document 145 Filed 01/31/19 PageID.7355 Page 2 of 9 DLA PIPER LLP (US) SA N D IEG O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF AUTHORITIES Page -ii- REPLY ISO MOTION TO STRIKE BOOTH DECLARATION USDC CASE NO. 3:16-CV-02779-JLS-BGS WEST\285195265.1 CASES Hal Roach Studios, Inc. v. Richard Feiner & Co., 896 F.2d 1542 (9th Cir. 1989) ............................................................................... 4 H.I.S.C., Inc. v. Franmar Int’l Importers, Ltd., 2018 WL 4945325 (S.D. Cal. Oct. 10, 2018) ........................................................ 4 Herring v. Veterans Administration, 1996 U.S. App. LEXIS 2230 (9th Cir. Jan. 26, 1996) .......................................... 3 Liebling v. Novartis Pharms. Corp., 2014 WL 12576619 (C.D. Cal. Mar. 24, 2014) .................................................... 4 Lockwood v. Wolf Corp., 629 F.2d 603 (9th Cir. 1980) ................................................................................. 2 Merrill v. Golik, 2013 WL 5176844 (W.D. Wash. Sept. 13, 2013) ................................................. 1 Wash. Cent. R. Co. v. Nat’l Mediation Bd., 830 F. Supp. 1343 (E.D. Wash. 1993) .................................................................. 3 Silver v. Executive Car Leasing Long-Term Disability Plan, 466 F.3d 727 (9th Cir. 2006) ................................................................................. 5 OTHER AUTHORITIES Fed. R. Civ. P. 37(c)(1)............................................................................................... 1 Fed. R. Civ. P. 56(c)(4)............................................................................................... 3 Case 3:16-cv-02779-JLS-BGS Document 145 Filed 01/31/19 PageID.7356 Page 3 of 9 DLA PIPER LLP (US) SA N D IEG O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -1- REPLY ISO MOTION TO STRIKE BOOTH DECLARATION USDC CASE NO. 3:16-CV-02779-JLS-BGS WEST\285195265.1 I. INTRODUCTION Defendants fail to overcome the deficiencies in their counsel’s summary judgment declaration. As a result, the declaration should be stricken except to the very limited extent that it places before the Court otherwise-admissible documents of record. II. ARGUMENT A. Mr. Booth Was Not Disclosed As A Fact Witness In Discovery Defendants miss the point of their failure to disclose Mr. Booth as a fact witness in discovery. DSE has not objected to the use of an attorney declaration simply to place otherwise-admissible documents before the Court. Mr. Booth’s summary judgment declaration, however, goes far beyond that limited purpose. His summary judgment declaration seeks to testify to alleged historical facts. For example, the declaration includes assertions like:  “During the Kickstarter campaign, Andrews McMeel Publishing contacted Defendants and agreed to partner with ComicMix to publish Boldly by December 2016.” Booth Decl. (ECF No. 110) at ¶ 13.  “The copyright page of a book is a typical place for disclaimers and other legal notices.” Booth Decl. at ¶ 50.  “Defendants’ creative contributions to Boldly developed over the course of multiple drafts and extensive revisions in mid-2016.” Booth Decl. at ¶ 52. See also Booth Decl. at ¶¶ 6, 15, 34, 35, 36, 41, 42, 43, 44, 46, 51. If Defendants wanted to use Mr. Booth—as opposed to, for example, their party witnesses—to testify to these facts on summary judgment, then they needed to disclose him in discovery. See, e.g., Merrill v. Golik, No. C12-5674, 2013 WL 5176844, at *1 (W.D. Wash. Sept. 13, 2013). Nor are Defendants correct that their failure to disclose was harmless under Fed. R. Civ. P. 37(c)(1). If Defendants had notified DSE that they intended to use Case 3:16-cv-02779-JLS-BGS Document 145 Filed 01/31/19 PageID.7357 Page 4 of 9 DLA PIPER LLP (US) SA N D IEG O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -2- REPLY ISO MOTION TO STRIKE BOOTH DECLARATION USDC CASE NO. 3:16-CV-02779-JLS-BGS WEST\285195265.1 Mr. Booth as a fact witness, then DSE would have had the opportunity to depose him during the discovery period to test the basis and credibility of his assertions. Defendants’ belated deployment of their counsel to perform the role of a fact witness is thus prejudicial to DSE. Finally, Defendants’ invocation of declarations that were filed earlier in the case is unavailing. See Response (ECF No. 133) at 1-2. Even if there had been a similar basis to object to any of those earlier declarations, nothing prevents the Court from ruling on the merits of DSE’s motion to strike the improper summary judgment declaration now. Moreover, Defendants again overlook the critical distinction between (1) declarations that merely attach documents and, in some instances, describe their contents and (2) Mr. Booth’s summary judgment declaration, which seeks to testify independently to alleged historical facts. B. Mr. Booth Lacks Personal Knowledge Of The Alleged Facts To Which He Testifies Defendants largely repeat the same error in arguing that their counsel’s declaration had a proper foundation. Again, the problem with the declaration is not that it seeks to present to the Court documents that were produced in discovery (such as the documents on which Defendants focus at page 4 of their Response). Rather, the problem is that Mr. Booth seeks to testify to facts outside his personal knowledge and to opinions from Defendants’ expert’s unsworn reports. The cases on which Defendants rely are therefore inapposite. For example, in Lockwood v. Wolf Corp., the attorney submitted an affidavit stating that his client had not received a settlement payment. 629 F.2d 603, 611 (9th Cir. 1980) (cited in Response at 2). The court ruled that “[i]t is reasonable to assume that he had personal knowledge of nonpayment [of the settlement amount]” because “the attorney negotiated the settlement and handled all the related transactions.” 629 F.2d at 611. Here, by contrast, Mr. Booth is Defendants’ outside litigation counsel ///// Case 3:16-cv-02779-JLS-BGS Document 145 Filed 01/31/19 PageID.7358 Page 5 of 9 DLA PIPER LLP (US) SA N D IEG O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -3- REPLY ISO MOTION TO STRIKE BOOTH DECLARATION USDC CASE NO. 3:16-CV-02779-JLS-BGS WEST\285195265.1 who has no independent relationship to the creation of the infringing work and Defendants’ efforts to bring it to market. Along similar lines, the court in Herring v. Veterans Administration ruled admissible the VA’s attorney’s declaration stating that he had produced to the plaintiff the plaintiff’s medical records that were in the VA’s possession. 1996 U.S. App. LEXIS 2230, at *15 (9th Cir. Jan. 26, 1996) (cited in Response at 4). The VA’s attorney was therefore simply attesting to the fact that the VA had provided the documents to the plaintiff. In contrast to Mr. Booth’s declaration, the VA’s attorney was not testifying to alleged historical facts relating to the substantive merits of litigation. And in Washington Central, the district court ruled admissible statements in the declaration of the Executive Director of the party defendant, the National Mediation Board, that were based on his review of the organization’s files as their official custodian. Wash. Cent. R. Co. v. Nat’l Mediation Bd., 830 F. Supp. 1343, 1353 (E.D. Wash. 1993). Here, by contrast, Defendants’ outside litigation counsel seeks to testify to alleged historical facts instead of a party witness. Defendants thus have failed to establish a proper foundation for their counsel’s declaration. See Fed. R. Civ. P. 56(c)(4) (“An affidavit or declaration used to support or oppose a motion must be made on personal knowledge, set out facts that would be admissible in evidence, and show that the affiant or declarant is competent to testify on the matters stated.”). Lastly, Defendants’ statement that “only counsel can be competent to testify to those matters” contained in documents designated as “Highly Confidential— Attorneys’ Eyes Only” under the protective order merely underscores their confusion. Response at 5. DSE repeatedly made clear in its motion that it does not challenge the use of an attorney declaration to place otherwise-admissible documents of record before the Court. There is no discernible need for counsel to further “testify” to those matters. Case 3:16-cv-02779-JLS-BGS Document 145 Filed 01/31/19 PageID.7359 Page 6 of 9 DLA PIPER LLP (US) SA N D IEG O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -4- REPLY ISO MOTION TO STRIKE BOOTH DECLARATION USDC CASE NO. 3:16-CV-02779-JLS-BGS WEST\285195265.1 C. Mr. Booth’s Declaration Cannot Be Used To Bring Professor Gans’s Unsworn Expert Reports Into Evidence Defendants also fail to show that Professor Gans’s unsworn expert reports can be admitted through their attorney’s declaration—which tries not only to authenticate the expert reports, but also to characterize and draw further conclusions from the opinions. See Booth Decl. at ¶¶ 21-26, 28-33, 37-40, 44, 47. Contrary to Defendants’ view (Response at 5), “it is well established that unsworn expert reports are inadmissible and cannot be used to create a triable issue of fact for purposes of summary judgment.” Liebling v. Novartis Pharms. Corp., No. 11- cv-10263, 2014 WL 12576619, at *1 (C.D. Cal. Mar. 24, 2014) (collecting cases); see also H.I.S.C., Inc. v. Franmar Int’l Importers, Ltd., No. 3:16-cv-00480, 2018 WL 4945325, at *4-5 (S.D. Cal. Oct. 10, 2018) (ruling inadmissible unsworn expert report that was unaccompanied by expert’s declaration and attached only to party’s attorney’s declaration). Defendants’ attempt to marginalize these cases as “two unpublished district court decisions” (Response at 5) ignores Liebling’s extensive discussion of cases from numerous courts of appeals and district courts within the Ninth Circuit that apply this rule. Liebling, 2014 WL 12576619, at *1. Nor are Defendants correct that the rule can simply be ignored because the expert theoretically could verify the reports. Response at 5. The case on which Defendants rely for their assertion of harmlessness involved a Registration Statement that had been filed with the SEC, submitted by both sides to the district court, and attached to a different declaration than the one that should have authenticated it. See Hal Roach Studios, Inc. v. Richard Feiner & Co., 896 F.2d 1542, 1551 & n.16 (9th Cir. 1990). In this case, by contrast, Defendants’ counsel is swearing to opinions in unsworn expert reports without any expert declaration. And while Defendants assert that expert reports can be verified through deposition testimony (Response at 6), they have not submitted any deposition testimony from Professor Gans that purportedly accomplishes this verification. Case 3:16-cv-02779-JLS-BGS Document 145 Filed 01/31/19 PageID.7360 Page 7 of 9 DLA PIPER LLP (US) SA N D IEG O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -5- REPLY ISO MOTION TO STRIKE BOOTH DECLARATION USDC CASE NO. 3:16-CV-02779-JLS-BGS WEST\285195265.1 Finally, Defendants’ accusation that DSE is trying “to surreptitiously foreclose review of the [Gans expert] reports” (Response at 1) is without merit. There is nothing “surreptitious[]” about DSE’s explicit request in its motion to strike the unsworn expert reports along with the rest of the improper material in Mr. Booth’s declaration. Moreover, DSE’s summary judgment papers have shown that summary judgment of copyright infringement is warranted even if the unsworn Gans expert reports are considered. Nonetheless, Defendants’ failure to comply with fundamental and well-established evidentiary rules should not be excused. D. The Legal Arguments in Mr. Booth’s Declaration Are Not Evidence, Much Less Admissible Defendants acknowledge that, as to “[a]nything in the Booth Declaration that could be construed as mere argument rather than fact,” “the Court need not consider it as evidence.” Response at 6. While the underlying principle now appears to be uncontested, exclusion is the appropriate remedy. See Silver v. Executive Car Leasing Long-Term Disability Plan, 466 F.3d 727, 731 n.2 (9th Cir. 2006) (affirming district court’s exclusion of attorney declaration that “contains legal argument that was not appropriate for a declaration”). And contrary to Defendants’ protests, the declaration is rife with improper legal argument. See, e.g., Booth Decl. at ¶¶ 39 (“DSE has not produced evidence that contradicts or raises a genuine dispute as to any fact material to Dr. Gans’ Expert Report or his testimony.”), 47 (“The magnitude of DSE’s licensing efforts, and the absence from the marketplace of DSE-licensed hybrids like Boldly, is evidence that Boldly is not in a market that DSE traditionally or reasonably would enter, or is likely to develop on its own.”), 48 (“DSE has not delineated the elements of its allegedly proprietary “illustration style” trademark with enough specificity to warrant trademark significance.”), 49 (“Boldly uses fonts and illustrations that recall Dr. Seuss’s style in a manner directly relevant to its artistic purposes.”). ///// Case 3:16-cv-02779-JLS-BGS Document 145 Filed 01/31/19 PageID.7361 Page 8 of 9 DLA PIPER LLP (US) SA N D IEG O 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -6- REPLY ISO MOTION TO STRIKE BOOTH DECLARATION USDC CASE NO. 3:16-CV-02779-JLS-BGS WEST\285195265.1 III. CONCLUSION Defendants’ attorney’s summary judgment declaration therefore should be stricken except to the very limited extent it attaches otherwise-admissible documents. Dated: January 31, 2019 Respectfully submitted, By /s/ Tamar Duvdevani TAMAR DUVDEVANI DLA Piper LLP (US) Attorneys for Plaintiff Dr. Seuss Enterprises, L.P. Case 3:16-cv-02779-JLS-BGS Document 145 Filed 01/31/19 PageID.7362 Page 9 of 9