Farkas v. Rich Coast Corporation et al

BRIEF IN OPPOSITION re First MOTION to Strike 126 MOTION for Partial Summary Judgment and Motion to Allow Time for Discovery under Rule 56

M.D. Pa.December 6, 2016

1 THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF PENNSYLVANIA ________________________________________________________________________ ABBEY FARKAS : Plaintiff : : vs. : CASE NO. 14-00272 : RICH COAST CORPORATION : JUDGE JOHN E. JONES, III : and : MAGISTRATE JUDGE CARLSON : JULIE O. UFEMA : : and : : LANCE J. UFEMA : JURY TRIAL DEMANDED D/B/A GROUP 13 PRODUCTIONS : Defendants : : ________________________________________________________________________ DEFENDANTS UFEMA’S BRIEF IN OPPOSITION TO PLAINTIFF’S MOTION TO ALLOW TIME FOR DISCOVERY UNDER RULE 56(d) AND/OR STRIKE DEFENDANTS UFEMA’S MOTION FOR PARTIAL SUMMARY JUDGMENT Defendants Julie O. Ufema and Lance J. Ufema d/b/a Group 13 Productions (hereafter “Defendants”), through their undersigned counsel, respond in opposition to Plaintiff Abbey Farkas’ (hereafter “Plaintiff”) Motion to Allow Time for Discovery Under Rule 56(d) and/or Strike Defendants Ufema’s Motion for Summary Judgment, Document # 141. I. Background: This matter has had a long protracted history in two federal courts and regards a copyright action by the Plaintiff against the Defendants arising out of the filming and editing of an independent motion picture made by the Defendants called “Caveat.” The lawsuit was originally brought in the United States District Court for the Western District of Pennsylvania, but was later transferred to the United States District Court for the Middle District of Pennsylvania. Discovery Case 1:14-cv-00272-JEJ-MCC Document 144 Filed 12/06/16 Page 1 of 12 2 in this lawsuit has been a long, dragged out, affair and was referred to Magistrate Judge Carlson for resolution of the discovery issues on May 2th, 2016, Document # 111. Ultimately, the Court set a July 2016 deadline to file motions to compel discovery. The Plaintiff chose not to file any additional motions to compel and as stated by Judge Carlson in his September 6th, 2016 Memorandum Opinion and Order, Document # 124 (see Exhibit 1), the Plaintiff was told that she had “…allowed her motion to compel deadline to pass without any action to litigate her discovery claims. Thus, as to plaintiff we deem discovery to be closed.” Defendants Ufema filed a Motion for Partial Summary Judgment on October 13th, 2016, Document #126 (see Exhibit 2), and Plaintiff responded with Plaintiff’s Motion to Allow Time for Discovery Under Rule 56(d) and/or Strike the Ufema Defendants’ Motion for Summary Judgement, Document # 141, on November 21st, 2016. (see Exhibit 3). Thereafter, on November 30th, 2016, Plaintiff filed a supporting brief (see Exhibit 4). LEGAL ARGUMENTS II. Rule 56 Discovery Is Unwarranted after a 2 Year Discovery Period Plaintiff is seeking additional time to seek discovery pursuant to Fed.R.Civ.P. 56(d). The Third Circuit traditionally confers discretion to the district court in deciding a Rule 56(d) motion. Contractors Assoc. of E. Penn, Inc. v. City of Phila., 945 F.2d 1260, 1267 (3rd Cir. 1991). A district court may grant summary judgment before discovery is completed as long as the party opposing summary judgment has had an “adequate opportunity to obtain discovery.” Dowling v. City of Phila., 855 F.2d 136, 138-139 (3rd Cir. 1988) (citing Celotex Corp v. Catrett, 477 U.S. 317, 322, 106 S. Ct. 2548, 91 L.Ed.2d 265 (1986)); Doe v. Abington Friends Sch., 480 F.3d 252, 257 (3rd Cir. 2007). As noted previously, Judge Carlson set a July 8th, 2016 deadline for the parties involved in this matter to file any additional motions to compel discovery and the Plaintiff Case 1:14-cv-00272-JEJ-MCC Document 144 Filed 12/06/16 Page 2 of 12 3 “…allowed her motion to compel deadline to pass without any action to litigate her discovery claims. Thus, as to plaintiff we deem discovery to be closed.” Plaintiff alleges that she does not have the facts necessary to oppose Defendants’ Motion for Partial Summary Judgment. Defendants’ Motion for Partial Summary Judgment is based on the legal and factual premise that Plaintiff did not have the Defendants’ permission to use the Defendants’ pre-existing materials in her copyright registration. Furthermore, Plaintiff Farkas did not disclose that she did not have permission to use the Defendants’ underlying work when she applied, and later secured, copyright registration PA 1-844-775 from the Copyright Office (See Palladium Music, Inc. v. EatSleepMusic, Inc., 398 F.3d 1193, 1200 (10th Cir. 2005) (holding copyright in sound recordings invalid where Plaintiff had used the pre-existing underlying musical works without authorization). As such, additional discovery will not create any additional material facts that would enable the Plaintiff to overcome the fact that she never had the Defendants’ permission to use their underlying work in her copyright registration. It is factually impossible for Plaintiff to overcome this uncontroverted fact. III. Plaintiff Infringed on Defendants’ Exclusive Rights Granted to a Copyright Owner As a copyright is secured automatically upon creation (17 U.S. Code §102(a) “Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”), the Defendants own the copyright at issue as they created the motion picture film of Caveat and all underlying works including, but not limited to, the raw film footage and script of the film. To establish a claim of copyright infringement, a party must establish: (1) ownership of a valid copyright; and (2) unauthorized copying of original aspects of that work. Whelan Assocs., Case 1:14-cv-00272-JEJ-MCC Document 144 Filed 12/06/16 Page 3 of 12 4 Inc. v. Jaslow Dental Laboratory, Inc., 797 F.2d at 1231 (3rd Cir. 1986); Gates Rubber Co. v. Bando Chem. Indus., 9 F3d 823, 831 (10th Cir. 1993). Copying is a “shorthand reference to the act of infringing any of the copyright owner's five exclusive rights set forth at 17 U.S.C. § 106.” Ford Motor Co. v. Summit Motor Products, Inc., 930 F.2d 277, 291 (3d Cir.1991). In the absence of express authorization, a party which copies elements of a copyrighted work, in any form enumerated in 17 U.S.C. § 106, without permission of the party with the valid ownership of the original copyrighted work is infringing on the ownership of the copyright. The Defendants’ copyright of the film Caveat began with their creation of the script, then with production of the movie in July of 2011. Plaintiff Farkas agreed to work for the Defendants in August 2011 after the filming was primarily finished. Plaintiff performed the editing services that she agreed to do and had sent the edited footage that she worked on to the Defendants with no conditions in the Fall of 2011. Although Plaintiff was in possession of a hard drive containing raw footage of the motion picture Caveat, there was no transfer of ownership or permission from the Defendants to use the footage in a separate copyrightable work. The motion picture Caveat premiered on December 3, 2011. Plaintiff applied for a copyright of her editing in May 2013, but had never sought permission from the Defendants to use the footage from Caveat, the underlying work. The Plaintiff herself states she had never sought the permission of the Defendants to use the footage in her alleged copyright (see Exhibit 5, Plaintiff’s May 17th 2016 deposition, p. 118:20-25 and p. 119:1- 11). As Plaintiff had no ownership or licensing agreement regarding the underlying raw footage that was used in her copyright, her copyright is invalid, as no derivative work can be based upon a copyrighted work without permission of the copyright owner (17 U.S. Code § 106 “The owner Case 1:14-cv-00272-JEJ-MCC Document 144 Filed 12/06/16 Page 4 of 12 5 of copyright under this title has the exclusive rights to do and to authorize…. derivative works based upon the copyrighted work”). US Copyright Office Circular 14: Derivative Works notes that: “A typical example of a derivative work received for registration in the Copyright Office is one that is primarily a new work but incorporates some previously published material. This previously published material makes the work a derivative work under the copyright law. To be copyrightable, a derivative work must be different enough from the original to be regarded as a "new work" or must contain a substantial amount of new material. Making minor changes or additions of little substance to a preexisting work will not qualify the work as a new version for copyright purposes. The new material must be original and copyrightable in itself.” When questioned in her deposition, the Plaintiff could not articulate how her editing created a substantially different film then that of what she was originally presented to edit. As the Plaintiff could not state how her work was different enough to be represented as an original work of authorship, her work cannot be considered a “derivative work” that can be copyrighted even if the Plaintiff had obtained the requisite permission from the Defendants to use the Defendants’ film footage film (see Exhibit 6, Plaintiff Farka’s May 17th 2016 deposition, p. 143:18-25, p. 144:1-20, p. 145:11-25, and p. 146:1-15). Plaintiff Farkas secured her alleged copyright 17 months after the public premiere of Caveat on December 3rd, 2011. Plaintiff was aware that Plaintiff’s contribution to the work at issue was not copyrightable and that Plaintiff’s contribution to the work at issue was a “work made for hire.” In fact, when the Plaintiff first completed the Copyright Registration application for the work at issue, the Plaintiff checked the box stating her contribution to the work at issue was a Case 1:14-cv-00272-JEJ-MCC Document 144 Filed 12/06/16 Page 5 of 12 6 “work made for hire.” A copyright specialist at the Copyright Office contacted the Plaintiff by email on June 21st, 2013 regarding her “work for hire” designation on her application. The Plaintiff responded four days later, on June 25, 2013 and stated: “Please allow this email to confirm that I am indeed the author of the film editing and the ‘work for hire’ designation was made in error.” Plaintiff had also stated to the Copyright Office that she was the sole author of the film editing on the motion picture Caveat, when Amanda Burns, Michael Calabro, and Coalin Smith were also credited editors of the film (see Exhibit 7, Plaintiff Farka’s May 17th 2016 deposition, p. 24:14-22; Defendant Julie Ufema’s May 17th 2016 deposition, p. 55:4–45 and p.55:1-20; and Defandant Lance J. Ufema’s May 17th 2016 deposition, p. 27:6-23). Therefore, the Plaintiff intentionally deceived the U.S. Copyright Office when she filed and executed her Copyright Registration Application for the work at issue as she was intentionally deceptive regarding the authorship of the work at issue. This too is also an uncontroverted fact. The United States Copyright Office relied upon the Plaintiff’s material and intentional misrepresentations in granting a Copyright Registration to Plaintiff Farkas. But for the material and intentional misrepresentations made by the Plaintiff to the Copyright Office, the Plaintiff would have never been granted a Copyright Registration. Under copyright law, “the knowing failure to advise the Copyright Office of facts which might have occasioned a rejection of the application constitute reason for holding the registration invalid and thus incapable of supporting an infringement action.” Cannon Group, Inc. v. Better Bags, Inc., 250 F. Supp. 2d 893, 898 (S.D. Ohio 2003) (quoting Russ Berrie & Co. v. Jerry Elsner Co., 482 F. Supp. 980, 988 (S.D.N.Y. 1980)); see, also, Eckes v. Card Update, 736 F.2d 859, 861- 62 (2d Cir. 1984) (finding that the knowing failure to “advise the Copyright Office of facts which might have occasioned a rejection of the application” enough to preclude infringement action); Case 1:14-cv-00272-JEJ-MCC Document 144 Filed 12/06/16 Page 6 of 12 7 see, e.g., R. Ready Prods., Inc. v. Cantrell, 85 F. Supp. 2d 672, 692 (S.D. Tex. 2000) (finding that a plaintiff committed fraud on the Copyright Office where the plaintiff failed to disclose preexisting work created by others); Garner v. Sawgrass Mills Ltd. P’ship, 35 U.S.P.Q.2d 1396, 1402-04 (D. Minn. 1994) (barring the plaintiff's copyright infringement action where he failed to disclose to the Copyright Office that his copyrighted logo was based on the defendant's logo). Based on the overwhelming evidence of knowing misrepresentations by Plaintiff, the Plaintiff’s copyright registration is clearly invalid. See R. Ready Prods., 85 F. Supp. 2d at 692 (finding registration invalid due to a knowing omission where Plaintiff’s work contained pre- existing material owned by his previous employer). Without a valid copyright registration, there can be no action for copyright infringement. Indeed, courts have found that registrations obtained in this manner are unable to support a copyright infringement case. Eckes, 736 F.2d at 861-62 (finding that the knowing failure to “advise the Copyright Office of facts which might have occasioned a rejection of the application” enough to preclude infringement action); GB Mktg. USA Inc. v. Gerolsteiner Brunnen GmbH & Co., 782 F. Supp. 763, 776 (W.D.N.Y. 1991); Russ Berrie & Co., 482 F. Supp. at 988; Vogue Ring Creations, Inc. v. Hardman, 410 F. Supp. 609, 616 (D.R.I. 1976); Cannon Group, 250 F. Supp. 2d at 898. As no issues of material fact exist on this issue, Defendants are entitled to Summary Judgment as a matter of law. IV. Permissive Use of Defendants’ Work Plaintiff repeatedly mischaracterizes aspects of the Defendants’ Motion for Partial Summary Judgment and argues several matters that are unrelated to the issues that the Defendants set forth in their motion. The primary mischaracterization that Plaintiff repeatedly makes is that she had permission or “implied consent” to use the Defendants’ work as the underlying work in her copyright Case 1:14-cv-00272-JEJ-MCC Document 144 Filed 12/06/16 Page 7 of 12 8 registration. Despite the Plaintiff’s mischaracterization of the Plaintiff’s Motion for Partial Summary Judgment in Averment #59, the Defendants have not disputed that Plaintiff was contacted by them to take their raw movie footage and perform film editing services for the independent film Caveat (indeed, the film’s own credits list her as an editor). However, Plaintiff Farkas never sought permission from Defendants Ufema to use that underlying film footage, or portions thereof, to include in the Plaintiff’s alleged registered copyright. As noted previously, the Plaintiff herself stated that she had never sought the permission of the Defendants to use the footage in her alleged copyright. Again, an uncontroverted fact. Plaintiff Farkas had agreed to edit the footage for Caveat knowing that the only reason the defendants Ufema wanted her to work for them was in order to use those edits in Caveat. Plaintiff gave the edited footage to the Defendants to use in their film. Because she had not disclosed to the Defendants prior to the delivery of the edited footage whether or not she intended to place any conditions on their use of that footage in Caveat, Plaintiff gave them an implied license to use those edits in their film. See Effects Assoc. v. Cohen, 908 F.2d 555, 559 (9th Cir. 1990). If Plaintiff’s work did not include an agreement for that purpose, then Plaintiff’s edits would have been worthless to the Defendants, so it stands to reason that part of what the Defendants were paying for was the right to use the edited footage for its intended purpose in their film, id. at 558- 59. Section 204(a) of the Copyright Act requires that any transfer of a copyright must be in writing. However, 17 U.S.C. § 101 states: “A “transfer of copyright ownership” is an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a copyright or of any of the exclusive rights comprised in a copyright, whether or not it is limited in time or Case 1:14-cv-00272-JEJ-MCC Document 144 Filed 12/06/16 Page 8 of 12 9 place of effect, but not including a nonexclusive license.” Transfers include exclusive licenses, but expressly excludes nonexclusive licenses. Thus, nonexclusive licenses are exempt from Section 204(a)’s writing requirement and may be “granted orally, or may even be implied by conduct.” (citing N. Nimmer and D. Nimmer Sec. 10.03[A] at 10-40.1 91995); Effects Associates, Inc. v. Cohen, 908 F.2d 555, 558 (9th Cir. 1990). I.A.E., Inc. v. Shaver, 74 F.3d 768, 776 (7th Cir., 1996) gives a now-generalized test as to what constitutes an “implied license” in copyright matters: “[A] an implied nonexclusive license has been granted when (1) a person (the licensee) requests the creation of a work, (2) the creator (the licensor) makes that particular work and delivers it to the licensee who requested it and (3) the licensor intends that the licensee-requestor copy and distribute his work.”(citing Effects, 908 F2d at 559). Plaintiff’s mischaracterization of the issue of an implied license in this matter ignores that it was the Defendants, who were the licensee, and that they requested the edits of the film, and that it was the Plaintiff, as licensor, who made the edits using the raw footage supplied by the Defendants. It was the Plaintiff who delivered the edited footage to the Defendants, the licensee who had requested it, and that Plaintiff Farkas was fully aware that the Defendants were going to use the edited footage in their film and intended to use it when they copied and distributed Caveat. To put the matter simply, the Defendants wanted the Plaintiff to edit their raw footage for use in their film Caveat, but they did not want the Plaintiff to use their underlying work in her alleged editing copyright. The Plaintiff had the Defendants’ implied consent to use the raw footage for the edits that were to be used in the film, and the Plaintiff delivered those edits to the Defendants knowing that they would use them in their film. The Plaintiff did not place any additional Case 1:14-cv-00272-JEJ-MCC Document 144 Filed 12/06/16 Page 9 of 12 10 conditions on them prior to the delivery of the edited footage, and the Plaintiff knew that the edits were to be incorporated into Caveat, and that the film was going to copied and distributed. The Defendants Ufema never consented that their raw footage could be used as an underlying work in the Plaintiff’s alleged editing copyright, nor can it be stated that they gave an “implied license” to do so as it fails the test outlined in I.A.E., Inc. v. Shaver, 74 F.3d 768, 776 (7th Cir., 1996), Without the Defendant’s permission to use the raw footage and pre-existing materials as the underlying work, the Plaintiff cannot claim the edited footage as a copyright. Plaintiff’s inclusion of pre-existing materials, used without the permission of the Defendants, who were the original authors and owners of that work, invalidates the copyright of her work, despite any additional creativity or originality that the Plaintiff may have contributed. 17 U.S.C. § 103(a) (“…protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.”); see e.g. Palladium Music, Inc. v. EatSleepMusic, Inc., 398 F.3d 1193, 1200 (10th Cir. 2005) (holding copyright in sound recordings invalid where Plaintiff had used the pre-existing underlying musical works without authorization). V. Plaintiff’s Claims are Barred Due to Copyright Misuse and Unclean Hands Plaintiff has asserted copyrights for material that she does not own against the Defendants for over a period of three years. Such an overextension of one’s copyright interest is prohibited and constitutes “copyright misuse,” a complete defense to copyright infringement. Alcatel USA, Inc. v. DGI Techs., Inc., 166 F.3d 772, 792 (5th Cir. 1999). The “Copyright misuse” doctrine bars a culpable plaintiff from prevailing on an action for the infringement of the misused copyright. Id. at 792. It forbids the use of the copyright to secure an exclusive right or limited monopoly not granted by the Copyright Office and which it is contrary to public policy to grant. Id. “When a Case 1:14-cv-00272-JEJ-MCC Document 144 Filed 12/06/16 Page 10 of 12 11 copyright holder attempts to use legal proceedings to protect an improper extension of a copyright, the court may refuse to enforce the copyright.” QAD, Inc. v. ALN Assocs., Inc., 770 F. Supp. 1261, 1266 (N.D. Ill. 1991). Plaintiff applied for and received a copyright registration covering the edits that she made to the Plaintiff’s film Caveat. She then used the registration to enforce her “purported” copyright against the Defendants for purposes of litigation. Given the Plaintiff’s unauthorized use of material owned by the Defendants to assert a copyright against the Defendants themselves, and given her attempt in this action to use her copyright in an attempt to gain control over components for which she has no rights, the Plaintiff has clearly engaged in copyright misuse. Plaintiff’s wrongful actions directly relate to the merits of the instant controversy and affect the equitable relations between the parties. See Saxon v. Blann, 968 F.2d 676, 680 (8th Cir. 1992). The QAD court dismissed the plaintiff’s infringement case based upon the defense of copyright misuse stating, “No party can use the limited grant that a copyright confers to gain control of components over which it has no such right.” QAD, Inc., 770 F. Supp. at 1266. Based on cases involving patent misuse, the court held: “When a copyright holder attempts to use legal proceedings to protect an improper extension of a copyright, the court may refuse to enforce the copyright.” Id. at 1266 V. Conclusion: For the above-stated reasons, Defendants Ufema respectfully submits that Plaintiff’s Motion to Allow Time for Discovery Under Rule 56(d) must be denied and Partial Summary Judgment should properly be granted in favor of the Defendants Ufema. Respectfully Submitted, Dated: December 6, 2016 HEENEY & ASSOCIATES, P.C. s/ Thomas P. Heeney_____ Thomas P. Heeney, Jr., Esq Attorney for Defendants Case 1:14-cv-00272-JEJ-MCC Document 144 Filed 12/06/16 Page 11 of 12 12 CERTIFICATE OF SERVICE I hereby certify that on December 6, 2016, I electronically filed the foregoing with the Clerk of the Court by using the CM/ECF system which will send a notice of electronic filing to the following: Robert S. Richman, Esq, Law Offices of Robert Richman. 711 Woodland Drive Pittsburgh, PA 15238-2423 robrichman@hotmail.com Attorney for Plaintiff Abbey Farkas Stephen S. Snook, Esq. Bierbach McDowell Zanic 20th South Wayne St. Lewistown, PA 17044 ssnook@bmzlaw.com Attorney for Defendant Rich Coast Corporation Dated: December 6, 2016 HEENEY & ASSOCIATES, P.C. /s/ Thomas P. Heeney_____ Thomas P. Heeney, Jr., Esq. Attorney for Defendants Case 1:14-cv-00272-JEJ-MCC Document 144 Filed 12/06/16 Page 12 of 12 EXHIBIT 1 Case 1:14-cv-00272-JEJ-MCC Document 144-1 Filed 12/06/16 Page 1 of 13 Case 1:14-cv-00272-JEJ-MCC Document 124 Filed 09/06/16 Page 1 of 12 IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF PENNSYLVANIA ABBEY FARKAS, Civil No. 1:14-CV-272 Plaintiff v. . . (Judge Jones) (Magistrate Judge Carlson) RICH COAST COFFEE, CORP., et al., Defendants . . MEMORANDUM OPINION AND ORDER I. Statement of Facts and of the Case Ideally, discovery in civil litigation is a smooth, swift and symmetrical process which leads to the full factual development of a dispute and allows all parties to make informed decisions regarding the course oflitigation based upon a common body of information. Sadly, this is not an ideal case. Therefore, we are called upon to write the last chapter in the discovery phase of this litigation, a lawsuit that has had a painful and protracted history in two federal courts over the past several years. This is a copyright action brought by Abbey Farkas against a number of defendants arising out ofthe production of an independent film, "Caveat." This action was originally brought in the United States District Court for the Western District of Pennsylvania but later was transferred to this court for trial. In our view, discovery in this litigation has, on occasion, been halting, contentious and confused. Several factors Case 1:14-cv-00272-JEJ-MCC Docu t 4 -1 Filed 12/0 /16 Page 2 of 13 Case 1:14-cv-00272-JEJ-MCC Document 124 Filed 09/06/16 Page 2 of 12 have contributed to this confusion, and all parties share some responsibility for the current state of discovery. For example, in the course of this litigation, the defendants have been represented by several different counsel, and have on occasion proceeded prose. These shifts in counsel staffing of the lawsuit have contributed to a discovery process which has not always been meticulous. In addition, on occasion, the plaintiff has exhibited an erratic approach to discovery, allowing discovery disputes to lay fallow for extended periods, before presenting them to the court as urgent matters. This case was referred to us for resolution of discovery issues in May of2016. (Doc. 111.) At that time the district court had entered an order extending the discovery deadline to May 31, 2016, (Doc. 1 05), and the parties had exchanged a series of! etters on the eve of this discovery deadline which cited one another for various alleged discovery defaults. (Docs.l06, 108,109, 110.) This exchange of correspondence was first initiated by the plaintiff, but led to mutual complaints by plaintiff and defendants regarding the state of documentary and written discovery. (Id.) Many of the matters complained about related to written discovery which had been propounded as much as a year ago. In an effort to create an orderly process for resolving these disputes, we conferred with counsel on three separate occasions, (Docs. 112, 115 and 118), and entered two orders prescribing timetables for the resolution ofboth parties' discovery 2 Case 1:14-cv-00272-JEJ-MC Docu e t 4 -1 Filed 12/0 /16 Page 3 of 13 Case 1:14-cv-00272-JEJ-MCC Document 124 Filed 09/06/16 Page 3 of 12 disputes. (Docs. 113 and 114.) These orders set deadlines in July of 2016 for all parties to file motions to compel. By setting these discovery motion deadlines for all parties, we endeavored to confrrm in writing what we attempted to express to counsel in our telephone conferences. It was, and continues to be, our intention to address the merits of all of the parties' remaining discovery disputes, so this litigation may promptly proceed forward. Having set these expectations, the parties have now proceeded forward, each in its own fashion. For her part, the plaintiff, who frrst initiated these discovery issues in correspondence in May 2016, allowed her motion to compel deadline to pass without any action to litigate her discovery claims. Thus, as to the plaintiff we deem discovery to be closed. In contrast, the defendants filed a motion to compel, which sought supplemental documentary disclosures from the plaintiff, disclosures which had been denied through broad but vague claims of attorney-client and work-product privilege. (Doc. 116.) This defense motion is fully briefed and is, therefore, ripe for resolution. (Docs. 119 and 123.) For the reasons set forth below, the defendants' motion to compel will be GRANTED, in part, and the plaintiff will be ordered to prepare a comprehensive privilege log describing in detail all documents which have been withheld and the 3 Case 1:14-cv-00272-JEJ-MC Document 4 -1 Filed 12/0 /16 Page 4 of 13 Case 1:14-cv-00272-JEJ-MCC Document 124 Filed 09/06/16 Page 4 of 12 basis for assertion of any privilege. Upon receipt of this privilege log, the parties will then be- provided an opportunity to litigate any privilege claims. II. Discussion Several basic guiding principles inform our resolution ofthe instant discovery dispute. At the outset, Rule 3 7 of the Federal Rules of Civil Procedure governs motions to compel discovery, and provides that: (a) Motion for an Order Compelling Disclosure or Discovery ( 1) In General. On notice to other parties and all affected persons, a party may move for an order compelling disclosure or discovery .... Fed. R. Civ. P. 37(a). The scope of what type of discovery may be compelled under Rule 3 7 is defmed, in turn, by Rule 26 of the Federal Rules of Civil Procedure.Fed. R. Civ. P., Rule 26(b )(I), which provides that: Unless otherwise limited by court order, the scope of discovery is as follows: Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Information within this scope of discovery need not be admissible in evidence to be discoverable. 4 Case 1:14-cv-0027 -JEJ-MC Document 144-1 Filed 12/06/16 Page 5 of 13 Case 1:14-cv-00272-JEJ-MCC Document 124 Filed 09/06/16 Page 5 of 12 Fed. R. Civ. P., Rule 26(b)(1). Rulings regarding the proper scope of discovery, and the extent to which discovery may be compelled, are matters consigned to the court's discretion and judgment. Thus, it has long been held that decisions regarding Rule 37 motions are "committed to the sound discretion of the district court." DiGregorio v. First Rediscount Corp., 506 F.2d 781, 788 (3d Cir. 1974). Similarly, issues relating to the scope of discovery permitted under Rule 26 also rest in the sound discretion of the Court. Wisniewski v. Johns-Manville Corp., 812 F.2d 81, 90 (3d Cir. 1987). Therefore, a court's decisions regarding the conduct of discovery, and whether to compel disclosure of certain information, will be disturbed only upon a showing of an abuse of discretion. Marroquin-Manriquez v. I.N.S., 699 F.2d 129, 134 (3d Cir. 1983).This far-reaching discretion extends to rulings by United States Magistrate Judges on discovery matters. In this regard: District courts provide magistrate judges with particularly broad discretion in resolving discovery disputes. See Farmers & Merchs. Nat'l Bank v. San Clemente Fin. Group Sec .. Inc., 174 F.R.D. 572, 585 (D.N.J.1997). When a magistrate judge's decision involves a discretionary [discovery] matter . . . , "courts in this district have determined that the clearly erroneous standard implicitly becomes an abuse of discretion standard." Saldi v. Paul Revere Life Jns. Co.. 224 F.R.D. 169, 174 (E.D.Pa.2004) (citing Scott Paper Co. v. United States. 943 F.Supp. 501, 502 (E.D.Pa.l996)). Under that standard, a magistrate judge's discovery ruling "is entitled to great deference and is reversible 5 Case 1:14-cv-00272-JEJ-MC Docu ent 4 -1 Filed 12/0 /16 Page 6 of 13 Case 1:14-cv-00272-JEJ-MCC Document 124 Filed 09/06/16 Page 6 of 12 only for abuse of discretion." Kresefky v. Panasonic Commc'ns and Sys. Co.. 169 F.R.D. 54, 64 (D.N.J.1996); see also Hasbrouck v. Bank:America Hous. Servs., 190 F.R.D. 42, 44-45 (N.D.N.Y.1999) (holding that discovery rulings are reviewed under abuse of discretion standard rather than de novo standard); EEOC v. Mr. Gold. Inc .. 223 F.R.D. 100, 102 (E.D.N.Y.2004) (holding that a magistrate judge's resolution of discovery disputes deserves substantial deference and should be reversed only if there is an abuse of discretion). Halsey v. Pfeiffer, No. 09-1138, 2010 WL 3735702, *1 (D.N.J. Sept. 17, 2010). This discretion is guided, however, by certain basic principles. Thus, at the outset, it is clear that Rule 26's broad definition ofthat which can be obtained through discovery reaches nonprivileged matter that is relevant to any party's claim or defense. Therefore, valid claims of relevance and privilege still cabin and restrict the court's discretion in ruling on discovery issues. Furthermore, the scope of discovery permitted by Rule 26 embraces all relevant information a concept which is not confined to admissible evidence but is also defmed in the following terms: "Information within this scope of discovery need not be admissible in evidence to be discoverable." Rather, "[p ]arties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense." A party moving to compel discovery bears the initial burden of proving the relevance ofthe requested information. Morrison v. Philadelphia Housing Auth., 203 F.R.D. 195, 196 (E.D.Pa. 2001). Once that initial burden is met, "the party resisting 6 Case 1:14-cv-00272-JEJ-MC Docu e t 4 -1 Filed 12/0 /16 Page 7 of 13 Case 1:14-cv-00272-JEJ-MCC Document 124 Filed 09/06/16 Page 7 of 12 the discovery has the burden to establish the lack of relevance by demonstrating that the requested discovery (1) does not come within the broad scope of relevance as defined under Fed.R.Civ.P. 26(b)(l), or (2) is of such marginal relevance that the potential harm occasioned by discovery would outweigh the ordinary presumption in favor of broad disclosure." In re Urethane Antitrust Litigation, 261 F.R.D. 570, 573 (D.Kan. 2009). Likewise, "[i]n deciding whether a federal privilege against discovery exists, plaintiffs as the objecting party have the burden of establishing the privilege." Bayges v. Se. Pennsylvania Transp. Auth., 144 F.R.D. 269, 271 (E.D. Pa. 1992).Indeed, because the assertion of a claim of privilege "may result in the withholding of relevant information and so may obstruct the search for truth," In re Chevron Corp., 633 F.3d 153, 164 (3d Cir. 2011), it is well-established that," 'The burden of proving that the ... privilege applies is placed upon the party asserting the privilege.' United States v. Landof, 591 F.2d 36, 38 (9th Cir. 1978)." Matter of Grand Jury Empanelled February 14. 1978, 603 F.2d 469, 474 (3d Cir. 1979). Judged against these benchmarks we find that the defendants have carried their initial burden of showing that the requested documentary discovery falls within Rule 26's broad definition of relevance. That documentary discovery involves communications concerning the production of the film "Caveat"; records of hours worked on this production by the plaintiff; documents supporting economic damages 7 Case 1:14-cv-00272-JEJ-MC Document 44-1 Filed 12/06/16 Page 8 of 13 Case 1:14-cv-00272-JEJ-MCC Document 124 Filed 09/06/16 Page 8 of 12 claims; and evidence relating to emotional injury claims. All of these seem to be directly relevant areas of inquiry by the defense. In response to this motion to compel the plaintiff frrst raises a number of procedural objections, none of which we fmd persuasive. First, the plaintiff insists that the scope of the defense discovery was narrowly circumscribed and limited by an order relating to a summary judgment motion. We disagree. Indeed, plaintiffs argument ignores the fact that the discovery deadline was extended generally to May 31, 2016, and discounts the fact that the defendants had raised concerns regarding the adequacy of this documentary discovery prior to May 31, in correspondence responding to the plaintiff's own May 2016letters relating to the discovery process. Further, the plaintiff's argument ignores the import of our prior orders setting timetables for merits litigation of these remaining discovery disputes by all parties. In this regard, we note that unlike the plaintiff, who allowed these discovery motion deadlines to pass, the defendants complied with our order directing the filing of discovery motions concerning outstanding documentary and written discovery issues by filing this motion on July 8. Therefore, we fmd that these discovery questions are properly before the court. Next, the plaintiff seems to allege that she has provided all relevant, non- privileged information, and suggests that prior defense counsel had in some way 8 Case 1:14-cv-00272-JEJ-MC Docu ent 4 -1 Filed 12/0 /16 Page 9 of 13 Case 1:14-cv-00272-JEJ-MCC Document 124 Filed 09/06/16 Page 9 of 12 conceded the completeness of this discovery. As we have noted for all counsel in our prior telephone conferences, we are not focusing on some retrospective analysis of the history of this litigation. Rather, our goal is to address the merits ofthe parties' current disputes. Given this forward-looking and merits-based approach which we are undertaking, we do not construe these prior communications by former counsel as precluding current counsel from seeking further clarification regarding what discoverable written and documentary material may still exist. Plaintiff then makes some additional assertions which are enigmatic and ambiguous, and in our view underscore the advisability of some further exploration of this issue. At times, the plaintiff seems to allege that she has produced all documents in her possession which are relevant to the claims, defenses and issues in this lawsuit. On other occasions, the plaintiff qualifies this assertion by suggesting that there is a body of additional material which has not been disclosed, but which counsel regards as privileged. The scope of these privilege claims cannot be assessed in any meaningful way because the plaintiff has never detailed in a comprehensive fashion what has been disclosed and what has been withheld on privilege grounds. This vague assertion of privilege is particularly challenging to understand and address since it is very difficult to appreciate in the abstract how documentary proof of damages or records of work done on this film could be entirely cloaked in privilege. 9 Case 1:14-cv-0027 -JEJ-MC Document 144-1 Filed 12/06/16 Page 10 of 13 Case 1:14-cv-00272-JEJ-MCC Document 124 Filed 09/06/16 Page 10 of 12 Given the somewhat enigmatic approach taken by plaintiff on his issue, more is needed to resolve these privilege claims. Therefore, we will direct that plaintiffs counsel to comply with the requirements of the rules and prepare a privilege log which shall be provided to the court an opposing counsel. The use of a privilege log as a tool in resolving disputes regarding claims of privilege is expressly sanctioned by Rule 26(b )(5)(A), which provides that: (A) Information Withheld. When a party withholds information otherwise discoverable by claiming that the information is privileged or subject to protection as trial-preparation material, the party must: (I) expressly make the claim; and (ii) describe the nature of the documents, communications, or tangible things not produced or disclosed--and do so in a manner that, without revealing information itself privileged or protected, will enable other parties to assess the claim. Fed. R. Civ. P. 26(b)(5)(A). In preparing this privilege log, plaintiff is reminded that the courts have described the legal requisites of a valid privilege log in the following terms: The privilege log should: identify each document and the individuals who were parties to the communications, providing sufficient detail to permit a judgment as to whether the document is at least potentially protected from disclosure. Other required information, such as the relationship between ... individuals not normally within the privileged relationship, is then typically supplied by affidavit or deposition testimony. Even under this approach, however, if the party invoking the privilege does not provide sufficient detail to demonstrate fulfillment of Case 1:14-cv-00272-JEJ-MC Document 4 -1 Filed 12/0 /16 Page 11 of 13 Case 1:14-cv-00272-JEJ-MCC Document 124 Filed 09/06/16 Page 11 of 12 all the legal requirements for application of the privilege, his claim will be rejected. Bowne. 150 F.R.D. at 474 (citations omitted); see also von Bulow. 811 F.2d at 146; In re Grand Jury Subpoena Dtd. Jan. 4. 1984. 750 F.2d 223, 224-25 (2d Cir.1984 United States v. Constr. Products Research. Inc., 73 F.3d 464, 473 (2d Cir. 1996). Upon receipt of this privilege log, the court and the parties will then be able to determine any remaining discovery privilege claims, and we will achieve the parties' shared goal of allowing this case to be promptly and fairly addressed on its merits. 1 An appropriate order follows: ill. Order In accordance with the foregoing Memorandum, IT IS ORDERED that the defendants' motion to compel (Doc. 116), is GRANTED, in part, as follows: 1. On or before October 10, 2016, the plaintiff will prepare and produce to the court and opposing counsel a comprehensive privilege log describing in detail all documents which have been withheld and the basis for assertion of any privilege. 2. Upon receipt of this privilege log, the parties will then confer regarding any privilege claims, and on or before October 24, 2016, the defendants 1Because we are granting this motion, in part, having found it to be meritorious, at least to the extent that some further disclosure is warranted through the preparation of a privilege log, we will decline plaintiffs request for attorney's fees. 11 Case 1:14-cv-00272-JEJ-MCC Docu ent 144-1 Filed 12/06/16 Page 12 of 13 Case 1:14-cv-00272-JEJ-MCC Document 124 Filed 09/06/16 Page 12 of 12 shall move to compel the production of any remaining disputed records. If no such motion is filed, the court will conclude that all aspects of documentary discovery are now closed. So ordered this 6th day of September 2016. S/Martin C. Carlson Martin C. Carlson United States Magistrate Judge 12 Case 1:14-cv-00272-JEJ-MCC Document 144-1 Filed 12/06/16 Page 13 of 13 EXHIBIT 2 Case 1:14-cv-00272-JEJ-MCC Document 144-2 Filed 12/06/16 Page 1 of 9 HEENEY & ASSOCIATES, P.C. By: Thomas P. Heeney, Jr, Esquire Attorney I.D. #77478 103 Grandview Road Boyertown, PA 19512 (215) 262-8707 Attorney for Defendants Julie & Lance J. Ufema IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF PENNSYLVANIA ABBEY FARKAS Plaintiff vs. RICH COAST CORPORATION and JULIE 0. UFEMA and LANCE J. UFEMA D/B/A GROUP 13 PRODUCTIONS Defendants CASE NO. 1:14-cv-272 JUDGE JOHN E. JONES, III CIVIL ACTION- LAW DEFENDANTS JULIE 0. UFEMA and LANCE J. UFEMA'S MOTION FOR PARTIAL SUMMARY JUDGEMENT Pursuant to Rule 56 of the Federal Rules of Civil Procedure and Local Rule of Civil Procedure 56.1, Defendants Julie 0. Ufema and Lance J. Ufema, d/b/a Group 13 Productions by and through their counsel, Thomas P. Heeney, Jr., Esquire, file this Motion for Partial Summary Judgement on the issue ofPlaintiff's copyright claims in the above-captioned action. In support of the Defendants' herein Motion for Partial Summary Judgment, Defendants incorporates by reference Plaintiff's supporting Memorandum of Law, Statement of Material Facts, and all supporting documents. Case 1:14-cv-00272-JEJ-MCC Document 144-2 Filed 12/06/16 Page 2 of 9 INTRODUCTION 1. This copyright infringement action was commenced by Plaintiff Abbey Farkas (hereafter "Plaintiff") against Defendants Julie 0. Ufema and Lance J. Ufema, d/b/a Group 13 Productions (hereafter "Defendants"). Plaintiff's copyright registration was issued in error and Plaintiff knew at the time she registered her alleged copyright with the Copyright Office that she did not possess a valid copyright, this motion seeks partial summary judgement on the copyright issues in this matter, namely Count I: Copyright Infringement, Count II: Commercial Appropriation, and Count III: Contributory Infringement ofPlaintiffFarka's Complaint and Count I: Declaratory Judgment of Invalidity of Copyright Registration No. PA 1-844-775 and Count II: Fraud on the U.S. Copyright Office of Defendant's Counter Claims. I. PLAINTIFF INFRINGED ON DEFEFENDANTS' EXCLUSIVE RIGHTS GRANTED TO A COPYRIGHT OWNER 2. A prima facie case of copyright infringement consists of ( 1) ownership of the copyrights and (2) violation of one of the exclusive rights granted to a copyright owner. See generally 4 M. & D. Nimmer, Nimmer on Copyright § 13.01 (2006). 3. As a copyright is secured automatically upon creation (17 U.S. Code §102(a) "Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device."), Defendants Ufemas own the copyright at issue as they created the motion picture film of Caveat and all underlying works including, but not limited to, the raw film footage and script of the film. 4. 17 U.S.C. § 106 grants owners of copyrighted works certain exclusive rights, and Case 1:14-cv-00272-JEJ-MCC Document 144-2 Filed 12/06/16 Page 3 of 9 precludes others from engaging in specific activities without the express authorization from the copyright owner. The pertinent part of the statute reads: "The owner of the copyright. .. has the exclusive rights ... (1) to reproduce the copyrighted work ... ; (2) to prepare derivative works based upon the copyrighted work ... " 5. To establish a claim of copyright infringement, a party must establish: (1) ownership of a valid copyright; and (2) unauthorized copying of original aspects of that work. Whelan Assocs .• Inc. v. Jaslow Dental Laboratory, Inc., 797 F.2d at 1231 (3rd Cir. 1986); Gates Rubber Co. v. Bando Chern. Indus., 9 F3d 823, 831 (lOth Cir. 1993). Copying is a "shorthand reference to the act of infringing any of the copyright owner's five exclusive rights set forth at 17 U.S.C. § 106." Ford Motor Co. v. Summit Motor Products, Inc., 930F.2d277, 291 (3d Cir.1991). 6. In the absence of express authorization, a party which copies elements of a copyrighted work, in any form enumerated in 17 U.S.C. § 106, without permission ofthe party with the valid ownership of the original copyrighted work is infringing on the ownership of the copyright. 7. Defendants Ufemas' copyright of Caveat began with first, their creation of the script, then with production of the movie in July of 2011. Plaintiff Farkas was hired in August 2011 after the filming was primarily finished. 8. Although Plaintiff was in possession of a hard drive containing raw footage of the · motion picture Caveat there was no transfer of ownership or permission to use the footage in a separate copyrightable work from the Defendants. 9. Caveat premiered on December 3, 2011. 10. Plaintiff applied for a copyright of her editing in May 2013 but had never sought permission from the Defendants to use the footage from Caveat, the underlying work. As Plaintiff Case 1:14-cv-00272-JEJ-MCC Document 144-2 Filed 12/06/16 Page 4 of 9 had no ownership or licensing agreement of the underlying raw footage that was used in her copyright, her copyright is invalid, as no derivative work can be based upon a copyrighted work without permission of the copyright owner (17 U.S. Code§ 106 "The owner of copyright under this title has the exclusive rights to do and to authorize.... derivative works based upon the copyrighted work"). 11. US Copyright Office Circular 14: Derivative Works notes that: "A typical example of a derivative work received for registration in the Copyright Office is one that is primarily a new work but incorporates some previously published material. This previously published material makes the work a derivative work under the copyrightlaw. To be copyrightable, a derivative work must be different enough from the original to be regarded as a "new work" or must contain a substantial amount of new material. Making minor changes or additions of little substance to a preexisting work will not qualify the work as a new version for copyright purposes. The new material must be original and copyrightable in itself." 12. When questioned in her deposition, the Plaintiff could not articulate how her editing was substantially different than the editing that was done in the December 3, 2011 version or subsequent versions of the motion picture Caveat. As the Plaintiff could not state how her work was different enough to be represented as an original work of authorship, her work cannot be considered a "derivative work" that can be copyrighted even if the Plaintiff had obtained the requisite permission from the Defendants to use the Defendants' film footage. 13. Plaintiff Farkas secured her alleged copyright 17 months after the public premiere of Caveat on December 3nt, 2011. Plaintiff was aware that Plaintiff's contribution to the work at issue was not copyrightable and that Plaintiffs contribution to the work at issue was a "work made for hire" Case 1:14-cv-00272-JEJ-MCC Document 144-2 Filed 12/06/16 Page 5 of 9 14. In fact, when the Plaintiff first completed the Copyright Registration application for the work at issue, the Plaintiff checked the box stating her contribution to the work at issue was a "work made for hire." A copyright specialist at the Copyright Office contacted the Plaintiff by email on June 21 5\ 2013 regarding her "work for hire" designation on her application. The Plaintiff responded four days later, on June 25, 2013 and stated: "Please allow this email to confirm that I am indeed the author of the film editing and the 'work for hire' designation was made in error." 15. Plaintiff had also stated that she was the sole author of the film editing on the motion picture Caveat, when Amanda Burns, Michael Calabro, and Coalin Smith were also credited editors of the film. 16. Plaintiff's film editing contributions to the final cut of the film were so minor that the Plaintiff could not appropriate} y designate herself as co-author of the film or as a co-author of the film editing of Caveat. Therefore, the Plaintiff intentionally deceived the U.S. Copyright Office when she filed and executed her Copyright Registration Application for the work at issue as she was intentionally deceptive regarding the authorship of the work at issue. 17. Plaintiff Farkas was also intentionally deceptive when she had responded to the Copyright Office's email that she was the author of the work at issue and that the work at issue was not made as a "work for hire." Plaintiff intentionally deceived the U.S. Copyright Office regarding the authorship and ownership of the work that she had copyrighted. 18. The United States Copyright Office relied upon the Plaintiff's material and intentional misrepresentations in granting a Copyright Registration to Plaintiff Farkas. But for the material and intentional misrepresentations made by the Plaintiff to the Copyright Office, the Plaintiff would have never been granted a Copyright Registration. 19. The Plaintiff cannot articulate what damages she has suffered and, as such, there Case 1:14-cv-00272-JEJ-MCC Document 144-2 Filed 12/06/16 Page 6 of 9 can be no recovery by Plaintiff. Plaintiff's copyright registration was on May 23, 2013, almost a full one and a half years after the public premiere of Caveat on December 3rd, 2011. Since Plaintiff waited more than 17 months to register her alleged copyright she is not entitled to statutory damage or attorney fees (7 U.S. Code § 412(Q " .. .leaves no room for discretion, mandating that no attorney's fees or statutory damages be awarded so long as the infringement commenced before registration of the copyright." Johnson v Jones, 149 F.3d 494 at 504-505 (6th Cir. 1998). 20. Lastly, as The Copyright Act of 1976 authorizes the trial court "to award a reasonable attorney's fee to the prevailing party .... " 17 U.S.C. § 505, and as attorney's fees have long been awarded in cases of willful copyright infringement even though no actual damages were awarded or even sought, (see, e.g., Shapiro. Bernstein & Co. v. Jerry Vogel Music Co., 161 F.2d 406, 410 (2d Cir.1946); Twentieth Century Music Corp. v. Frith, 645 F.2d 6 (5th Cir.1981) (per curiam), it is the Defendants that are entitled to an award of attorney's fees. II. CONCLUSION 21. In the absence of any evidence which would support that Plaintiff had the express permission from the Defendants to use their underlying work as part of her copyright, and as the Plaintiff herself could not articulate how her editing was substantially different than the existing original work that belongs to the Defendants, and because the Plaintiff knew, or should have reasonably known, that she was not the sole author of the work in question, there is no genuine issue of material fact that would support conferring the legal protections of the Copyright Act to PAl-844-775, her alleged copyrighted work. WHEREFORE, the Defendants hereby respectfully request that this Honorable Court grant Defendants' Motion for Partial Summary Judgment on Count I: Copyright Infringement, and by operation of law invalidate Count II: Commercial Appropriation and Count III: Contributory Infringement ofPlaintiffFarka's Complaint and further rule that the copyright ofPA 1-844-775 is Case 1:14-cv-00272-JEJ-MCC Document 144-2 Filed 12/06/16 Page 7 of 9 invalid. And as Plaintiff knew, or should have known, at the time she registered Copyright Registration No. PA 1-844-755 that she did not possess a valid copyright and therefore committed a fraud on the US Copyright Office, Defendants respectfully request that damages suffered related to Counts I and II of their Counter Claims shall be assessed at the time of trial. DATE: October 13. 2016 Respectfully submitted, HEENEY & ASSOCIATES, P.C. /sffhomas P. Heeney, Jr. Thomas P. Heeney, Jr., Esq. Attorney for Defendants Case 1:14-cv-00272-JEJ-MCC Document 144-2 Filed 12/06/16 Page 8 of 9 CERTIFICATE OF SERVICE I, Thomas P. Heeney, Jr., Esq., certify that all counsel of record were sent a true and correct copy of this pleading via electronic service by ECF on the below date. DATE: October 13,2016 RobertS. Richman, Esq. Law Offices of Robert Richman 711 Woodland Drive Pittsburgh, PA 15238 robrichman@hotmail.com Stephen S. Snook, Esq. Bierbach McDowell Zanic 20 South Wayne Street Lewistown, P A 17044 ssnook@bmzlaw.com Respectfully submitted, HEENEY & ASSOCIATES, P.C. Is/Thomas P. Heeney, Jr. Thomas P. Heeney, Jr., Esq. Attorney for Defendants Case 1:14-cv-00272-JEJ-MCC Document 144-2 Filed 12/06/16 Page 9 of 9 EXHIBIT 3 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 1 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 1 of 35 IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF PENNSYLVANIA ABBEY FARKAS, Plaintiff v. RICH COAST CORPORATION, JULIE 0. UFEMA, and LANCE J. UFEMA d/b/a GROUP 13 PRODUCTIONS, LANCE W. UFEMA Defendants CIVIL ACTION NO.: 1:14-cv-00272-JEJ-MCC Judge John E. Jones, III Judge Martin C. Carlson PLAINTIFF'S MOTION TO ALLOW TIME FOR DISCOVERY UNDER RULE 56( d) AND/OR TO STRIKE THE UFEMA DEFENDANTS' MOTION FOR SUMMARY JUDGMENT JURY TRIAL DEMANDED PLAINTIFF'S MOTION TO ALLOW TIME FOR DISCOVERY UNDER RULE 56( d) AND/OR TO STRIKE THE UFEMA DEFENDANTS' MOTION FOR SUMMARY JUDGMENT NOW COMES Plaintiff, by and through Robert S. Richman, Esq., who files the within Motion to Allow Time for Discovery under Rule 56( d) and/or to Strike the Ufema Defendants' Motion for Summary Judgment and, in support thereof, states as follows: BACKGROUND 1. Plaintiff filed the instant action on July 1, 2013 in the United States District Court for the Western District of Pennsylvania. Page 1 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 2 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 2 of 35 2. Following the Defendants' venue challenge, wherein the Defendants claimed to not conduct business in the Western District, 1 this matter was transferred to the Middle District of Pennsylvania before the Honorable United States District Judge John E. Jones, III. 3. A Case Management Conference was held in the Middle District before the Judge John E. Jones, III, on May 30, 2014, and discovery commenced thereafter. 4. Plaintiff diligently propounded written discovery in the form of Requests for Admissions, Requests for Production of Documents, and Interrogatories in advance of any deposition testimony such that written discovery would be subject to cross examination. 5. Notwithstanding the fact that Plaintiff propounded written discovery in conformity with the April 24, 2014 Joint Case Management Plan (Doc. 58), Plaintiff was unsuccessful in obtaining timely and substantially responsive answers to all of the propounded written discovery before deposition testimony was secured and did not obtain any response to Plaintiff's Second Request for Production of 1 See Docs. 12-4, p. 2, ~3; 13-2, p. 1, ~4; Exhibit A. The Rich Coast Corporation's corporate designee, Lance W. Ufema, testified that there is and was a Rich Coast Corporation presence in Altoona and Johnstown during the relevant time period (2/29/2016 Lance W. Ufema Depo., p. 56:2-24) and Lance J. Ufema testified that he works in the Western District "quite often" notwithstanding filed affidavits to the contrary. Page2 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 3 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 3 of 35 Documents until the June 8, 2016 Court Order directed the Defendants to provide the same on July 8, 2016. (Doc. 113, pp. 1-2, ,-r1) 6. After the expiration of the August 30, 2015 discovery deadline, on October 1, 2015, Plaintiff filed aMotion for Summary Judgment. (Doc. 89) 7. At that juncture, as of August 30, 2015, the Defendants had four hundred fifty-seven ( 457) days to secure discovery. 8. Plaintiffs October 1, 2015 Motion for Summary Judgment averred: [T]he Ufema Defendants failed to participate in discovery, in good faith, disregarding Plaintiffs repeated attempts to secure timely and substantially responsive answers to Plaintiffs written discovery. The Ufema Defendants frequently interposed meritless objections while making a minimal effort to 'respond' to the substance of the matters presented or to even merely qualify answers before simply evading a meaningful response. On other occasions, the U fema Defendants rendered 'responses' which overtly conflicted with produced documents thus reflecting a less than genuine effort. (Doc. 89, pp. 3-4, ,-r15) 9. On November 5, 2015, the Defendants filed a Joint Motion to Strike Plaintiff's Motion for Summary Judgment and Motion to Allow Additional Time for Discovery under Rule 56( d) (Doc. 94) alleging that Plaintiffs Motion for Summary Judgment was "an attempt on the part of Plaintiff to back the Defendants up against a wall." (Doc. 97, p. 11) 10. The Defendants averred in their Joint Motion: Page3 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 4 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 4 of 35 Due to the lack of discovery, specifically depositions and other discovery that may become necessary ... Defendants cannot fully, accurately, and completely present facts essential to justify its opposition to Plaintiffs Motion for Summary Judgment. (Doc. 94, p. 2, ~9) 11. Defendants argued that Plaintiff refused to submit to a deposition citing a June 29, 2015 email which was attached to the Defendants' Joint Motion as Exhibit A. (Doc. 94-1) Therein, Plaintiff's Counsel stated: Plaintiffs position remains that I would like written discovery concluded before deposition testimony. Once written discovery has been answered, we can schedule all depositions on one day as was done previously to proceed as efficiently as possible. (Doc. 94-1 - 5/29/2015 Email from Plaintiff's Counsel to Defendant Counsel 5:11 PM) 12. Defendants further argued in their Joint Motion that "the lack of discovery in the nature of depositions in this case was, in large part, caused by Plaintiff Counsel's intransigence and refusal to cooperate [with] Defendants' Counsel."2 (Doc. 94, p. 3, ~13) 13. On December 22, 2015, the Court granted Defendants' Joint Motion to allow for the supplementation of the evidentiary record with the depositions of the parties. (Doc. 101, p. 13) 2 As indicated, infra, after extensive Court review, it has been adjudged that Plaintiff has provided all responsive and discoverable documents pursuant to the Ufema Defendants' June 5, 2014 First Request for Production of Documents Directed to Plaintiff which Plaintiff produced to all Defendants two and one-half (2V2) years ago on July 22, 2014. The Ufema Defendants' June 5, 2014 First Request for Production of Documents Directed to Plaintiff was the only written discovery propounded by any of the Defendants. Page4 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 5 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 5 of 35 14. Prior to the party depositions in this matter and after Plaintiffs counsel repeatedly conferred, both verbally and in writing, with the Defendants without achieving resolution, Plaintiff notified the Court that the U fema Defendants refused to respond to Plaintiff's Second Request for Production of Documents. (See Doc. 108, p. 2) 15. The Court allowed the Defendants to respond to the Court regarding the discovery issues raised by Plaintiff after the scheduled May 16 and 17, 2016 party depositions were completed, on May 20,2016. (Doc. 107, pp. 1-2, ,-r,-r1-2) 16. Counsel for the Ufema Defendants responded to the Court acknowledging that the Ufema Defendants failed to answer Plaintiff's Second Request for Production of Documents and advising the Court (1) that the Ufema Defendants' counsel only became aware that the Ufema Defendants had not answered Plaintiff's Second Request for Production of Documents at the time of the Ufemas' depositions on Monday, May 16, 2016, and (2) that the "Plaintiff did not provide the Defendants one single document or piece of paper- absolutely nothing." (See Doc. 109, p. 2) 17. The representation by the U fema Defendants' counsel that he was unaware that his clients had failed to respond to Plaintiff's Second Request for Production of Documents was clearly and demonstrably erroneous. (See Exhibit B - multiple correspondence discussing the Defendants' failure to respond to Page 5 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 6 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 6 of 35 Plaintiff's Second Request for Production of Discovery) Mr. Heeney represented the Ufema Defendants for over one (1) year when he initially made and subsequently continued to advocate these false statements to the Court but attributed his confusion to the succession of counsel representing the U femas who withdrew when, like the Plaintiff, the law firm went unremunerated after rendering professional services.3 (Docs. 70 and 109; 66, p. 2, ,-r3) 18. The representation by the Ufema Defendants' counsel that Plaintiff did not produce any documents during discovery was also patently false as both the U fema Defendants and the Rich Coast Corporation attached correspondence produced by Plaintiff during discovery to their Answers filed with the Court on June 5, 2015. (See Exhibit C- Rich Coast Corporation's Answer, Exhibit A, Doc. 77-1; Ufema Defendants' Answer, Exhibit A, Doc. 78-1) Bates numbered discovery further established that Plaintiff had produced eighty-two (82) pages. 3 While the Ufemas agreed that "it would be inequitable, unreasonable, and unfair to require [their lawyers] to continue to represent the Ufemas without payment for their services," the Ufema Defendants vigorously contend that they should continue to enjoy (1) the fruits of Plaintiffs unremunerated film editing work; (2) employer privileges under the Copyright Act in the form of ownership of Plaintiffs copyrighted work by operation of law (as though Plaintiff was a validly compensated employee); (3) tax benefits for representing the Plaintiff as an employee on their Internal Revenue Service tax forms, and ( 4) attorney fees which have heretofore been unpaid- all while denying that Plaintiff was an employee, pleading that Plaintiff was an independent contractor, testifying that Plaintiff was an independent contractor, failing to compensate Plaintiff in accordance with state and federal minimum wage and overtime requirements, and without any signed written instrument transferring copyright to the Ufemas. Page 6of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 7 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 7 of 35 19. The discovery 'dispute' between the parties was referred to Chief Magistrate Judge Martin C. Carlson by Order of Judge John E. Jones III on May 25,2016 for resolution. (Doc. 111) 20. After nearly six (6) months, the discovery 'dispute' that ensued from the Ufemas' refusal to respond to Plaintiffs written discovery from April2015 has yielded the following: • Per the Ufemas' request, all produced documents were Bates numbered on July 8, 2016 (Doc.ll3, p. 2,~ 2); • Plaintiff did, in fact, produce documents to the Defendants; • The Court found that the Ufemas failed to produce a response to Plaintiff's Second Request for Production of Documents, and, therefore, by Court Order, the Ufemas were directed to "furnish the Plaintiff with full and complete responses to the second set of document requests that the Plaintiff propounded in this case on or around April 28, 2015" (Doc. 113, pp. 1-2, ~1); • Plaintiff obtained a substantially meaningless and evasive response to Plaintiff's Second Request for Production of Documents in defiance of the Court's June 8, 2016 Order with objections, answers that generally refer to unspecified produced discovery, and non-specific testimony in response to Plaintiffs discovery request (See Exhibit D); • The Court confirmed, through adjudicating the Ufema Defendants' two (2) filed Motions to Compel the Production of Documents, that Plaintiff did, in fact, produce all responsive and discoverable documents from the Defendants' propounded discovery (as had been repeatedly communicated to the Ufemas and to the Court); • Plaintiff filed a docketed Privilege Log with the Court to clarify the basis for withholding the incontrovertibly privileged document. (Doc. 125) The Page7 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 8 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 8 of 35 Ufemas' counsel denied that Plaintiff produced the Privilege Log during the October 31, 2016 teleconference; and • The Court agreed that the one and only intentionally withheld privileged document was clearly not discoverable after viewing the same in camera together with Plaintiffs declaration. THE UFEMAS' MOTION FOR PARTIAL SUMMARY JUDGEMENT PRESENTS NOVEL LEGAL THEORIES AND INVENTED FALSE FACTUAL AVERMENTS 21. Notwithstanding the Ufemas' purported need to protractedly litigate alleged discovery deficiencies associated with Plaintiffs Response to the Ufemas' First Request for Production of Documents Directed to Plaintiff which heretofore has been met without any substantial success as to the merits, the Ufema Defendants filed an October 13, 2016 Motion for Partial Summary Judgment (Doc. 126) prior to the filing of their most recent discovery Motion, the October 24,2016 Second Motion to Compel Production ofDocuments.4 (Doc. 134) 22. In the Ufemas' Motion for Partial Summary Judgment, the Ufema Defendants present novel legal theories and invented false factual averments conspicuously and impermissibly omitted from their Answer to Complaint with Affirmative Defenses and Counterclaims (Doc. 78) at the eleventh hour in an overt 4 The Ufema Defendants' filed a Proposed Order in conjunction with their Second Motion to Compel the Production of Discovery requesting that Plaintiffs Copyright action be dismissed and that P A 1-844-77 5 be ruled invalid. (Doc. 134- 12, p. 2) Page 8of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 9 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 9 of 35 attempt to dupe this Honorable Court into improvidently invalidating Plaintiffs copyright pursuant to P A 1-844-77 5. 23. Pursuant to 17 U.S.C. §410, Plaintiffs copyright registration, PA 1- 844-77 5 is prima facie evidence of copyright protection. 24. The burden of proof is on the Defendants to rebut the presumption of copyright protection from 17 U.S.C. §410 and where the issue is whether the copyrighted material is 'original,' the presumption will not be overcome unless the Defendants offer proof that the Plaintiffs copyrighted work was copied from other works or similarly probative evidence as to originality. See M. Nimmer & D. Nimmer, Nimmer on Copyright, §12.11[A], at 12-83-85 (1990). 25. The Defendants have presented no probative evidence that Plaintiffs work was copied. 26. The Register of Copyrights, on behalf of the United States Copyright Office, determined that the film editing materials deposited with the United States Copyright Office constitutes copyrightable subject matter. 5 5 17 U.S.C. §410 provides: (a) When, after examination, the Register of Copyrights determines that, in accordance with the provisions of this title, the material deposited constitutes copyrightable subject matter and that the other legal and formal requirements of this title have been met, the Register shall register the claim and issue to the applicant a certificate of registration under the seal of the Copyright Office. The certificate shall contain the information given in the application, together with the number and effective date of the registration. (b) [not applicable] Page9 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 10 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21116 Page 10 of 35 27. The Defendants never pled any facts, produced any discovery, or presented any testimony in support of the naked assertions and legal conclusions underpinning the Motion for Partial Summary Judgment. Accord Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009); Bell At!. Corp. v. Twombly, 550 U.S. 544, 555 (2007); Conley v. Gibson, 355 U.S. 41,47 (1957). 28. The Defendants have never provided any statutory or case law authority to support the unfounded contention that film editing is not copyrightable. 29. No legal authority exists in support of the Defendants' argument that film editing is not copyrightable. 30. As this Honorable Court stated in its May 22, 2015 Memorandum Opinion and Order (Docs. 75, p. 8 and 76, p. 8), "the argument that Plaintiffs film editing is not an original work of authorship is clearly an issue of fact." However, in that connection, the Ufemas' conclusory averments have never been substantiated with any actual evidentiary support and, to the contrary, were specifically controverted by Defendant Lance Jason U fema when he testified that Plaintiff had "creative license" at the October 29, 2013 evidentiary hearing, one (c) In any judicial proceedings the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate. The evidentiary weight to be accorded the certificate of a registration made thereafter shall be within the discretion of the court. Page 10 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 11 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 11 of 35 and one-half (Ph) years before the Court's aforementioned May 22, 2015 Memorandum Opinion and Order and nearly three (3) years before the Ufema Defendants' October 13, 2016 Motion for Partial Summary Judgment. (Doc. 129- 3, 10/29/2013 H.T., Lance J. Ufema, p. 90:7-17) 31. The Defendants have had a very long time to present legal and factual support for their contentions. 32. Nevertheless, there exists not one scintilla of evidentiary support for a legal fmding that Plaintiffs work lacked 'originality' or 'creativity' as of June 5, 2015, the date that the Defendants filed their substantially identical Answers to Complaint with Affirmative Defenses and Counterclaims, and, at all times since, as discovery has continued. (Docs. 77 and 78) 33. As such, the Defendants' certification, implicit in all federal pleadings, that their "legal contentions are warranted by existing law" and that their "factual contentions have evidentiary support" after a "reasonable inquiry" underscores the utter lack of credibility with which the U fema Defendants' Motion should be considered in conjunction with the applicable standard of review for summary judgment which considers all reasonable inferences in the light most favorable to the Plaintiff, the non-moving party. See Doe v. C.A.R.S. Prot. Plus, Inc., 527 F.3d 358, 362 (3rd Cir. 2008) Page 11 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 12 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 12 of 35 34. The Defendants have objected to producing the actual movie and, all versions thereof, in order to insulate themselves from the Court properly evaluating the credibility of the Defendants and the veracity of their pleadings which, among other things, accuse the Plaintiff and Plaintiffs counsel of professional fraud and intentional misrepresentation. 35. There should be no tolerance in the legal profession for initiating and advocating scandalous allegations of professional fraud, as the Defendants do, in the absence of evidentiary support which they ask this Court to, in effect, countenance through their Motion for Partial Summary Judgment. 36. The Defendants' Copyright Counterclaims should rightfully be denied and dismissed with prejudice and the Court should enter an award for Summary Judgment on the copyright issues in favor of the Plaintiff. 3 7. Further, this Court should strongly consider assessing Defendants' counsel with appropriate sanctions in order to punish and deter future misconduct before a federal tribunal. 38. The United States District Courts are decidedly not a viable forum for unsubstantiated character assassinations and should not be used as such to obfuscate unfavorable facts or to subject party litigants and their legal representatives to defamation in order to adjudicate federal claims. (See Docs. 77, p.42,~239;78,p.38,~241) Page 12 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 13 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 13 of 35 3 9. It is noted and emphasized that the Defendants produced discovery both in state court and in federal court (1) denying that Plaintiff was an employee and (2) acknowledging that no signed written instrument exists between the parties transferring any rights to Plaintiffs film editing work. 40. The chronology of the Defendants' representations m conjunction with the June 5, 2015 Answers to Complaint with Affirmative Defenses and Counterclaims clarify the untruthfulness and utter lack of support for the Defendants' contention that Plaintiff and Plaintiffs counsel were aware that Plaintiffs contribution to the work at issue was a 'work made for hire' and underscores the lack of support for the Defendants' allegations of professional fraud. Defendants' Argument That Plaintiff Lacked Permission to Use the Raw Video Footage of Caveat Is Legally and Factually Unfounded Under Copyright Law 41. The herein Defendants attempt to challenge the copyright awarded by the United States Copyright Office for the Plaintiffs unremunerated film editing on the motion picture film, Caveat, unburdened by the facts elicited before and during these proceedings; copyright law; the governing and applicable federal rules of pleading; and the Pennsylvania Rules of Professional Conduct. 42. Specifically, the Ufema Defendants allege that Plaintiff violated the Defendants' copyright by actually performing the very film editing on Caveat that Page 13 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 14 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11121/16 Page 14 of 35 Defendants Lance Jason Ufema and Julie O'Connor Ufema hired Plaintiff to do. (Doc. 126, -,r-,r6-1 0) 43. The Ufema Defendants allege that the parties had no licensing agree~ent notwithstanding the fact that all parties testified that Plaintiff was hired to perform film editing on Caveat. 44. Copyright law (in every District and Circuit in these United States) confers an implied license in order to effectuate the clear intent of the parties, i.e., that Plaintiff perform film editing for Caveat. See Atkins v. Fischer, 331 F .3d 988 (D.C. Cir. 2003); Estate of Hevia v. Portrio Corp., 602 F.3d 34 (1st Cir. 2010); Bourne v. Walt Disney Co., 68 F.3d 768 (2nd Cir. 1995); Stock Car Auto Racing, Inc. v. Scharle, 184 Fed.Appx. 270 (3rd Cir. 2006); Lulirama Ltd. V. Axcess Broad. Srvs., Inc., 128 F.3d 872 (5th Cir. 1997); Johnson v. Jones, 149 F.3d 494 (6th Cir. 1998); LA.E., Inc. v. Shaver, 74 F.3d 768 (7th Cir. 1996); Effect Assocs., Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990); Wilchombe v. TeeVee Toons, Inc., 555 F.3d 949 (11th Cir. 2009). 45. Equitable estoppel further precludes the Defendants' purported claim of copyright infringement and any limitations argument as to damages. Equitable tolling applies because the Defendants misled the Plaintiff about the nature of their business relationship. Page 14of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 15 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 15 of 35 46. Plaintiff only discovered that the Defendants did not consider Plaintiff an employee when the Defendants produced discovery in state court denying that Plaintiff was an employee. 4 7. The Defendants had actively misled the Plaintiff by concealing their interpretation of the business relationship and affirmatively representing that Plaintiff was an employee directly to the Plaintiff and to the public through the issuance of employee tax forms and the withholding of taxes from her 'payroll' paycheck. (Doc. 84-14, pp. 2-3) 48. It was the Defendants' state court discovery responses denying Plaintiffs employment that occasioned these federal proceedings as copyright adjudication enjoys exclusive jurisdiction in the United States District Courts and the purported lack of an employment relationship and signed written agreement between the parties regarding Plaintiffs film editing clarified that the Defendants' violated Plaintiffs copyright.6 49. As to the 'permission' or license issue, the Restatement (Second) of Torts 892 states that if words or conduct are reasonably understood by another to be intended as consent, they constitute apparent consent and are as effective as consent in fact. See also 74 AM. Jur.2d Torts 53. 6 Should the Court determine that Plaintiff was an employee, the lack of valid consideration under state and federal law would also serve to prevent the transfer of copyright by operation of law under the 'work made for hire' doctrine. Page 15 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 16 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 16 of 35 50. Further, the Restatement (Second) of Torts 892A (1979) provides that one who effectively consents to conduct of another intended to invade his interest cannot recover in an action of tort for the conduct or for harm resulting from it. 51. The Ufemas are currently counterclaiming that the Plaintiff actually breached the contract with the Ufemas to perform the allegedly 'unpermitted' or 'unlicensed' film editing. 52. There exists no dispute whatsoever that Plaintiff was hired to render professional film editing services for the motion picture film, Caveat. 53. Thus, two (2) possibilities exist with regard to the copyright issue (which the Ufema Defendants conspicuously fail to mention in their improper Motion sub judice): (1) Plaintiff was an independent contractor and, therefore, the Ufema Defendants do not own a Copyright for Plaintiffs film editing because no signed written instrument exists between the parties transferring Plaintiffs Copyright (even though Defendants issued Plaintiff a W-2 and withheld taxes from a "payroll" paycheck) (Doc. 84-14) or (2) the Ufema Defendants did not validly pay Plaintiff as an employee pursuant to state and federal minimum wage and overtime violations thereby nullifying any transfer by operation of law under the "work for hire" theory for want of consideration and the legal maxim, commodum ex injuria sua nemo habere debet, interpreted to mean that a wrongdoer should not be enabled by law to take any advantage from his actions to prevent injustice. Page 16 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 17 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 17 of 35 54. In light of these two (2) aforementioned scenarios, it is of no legal consequence who wrote the script or filmed the movie, Caveat. 55. There is no bona fide legal dispute presented by the Defendants that film editing is a copyrightable subject matter pursuant to 17 U.S.C. §102(a)(6) as (1) this was affirmed by the Certificate of Registration from the United States Copyright Office Registration Number P A 1-844-775 and (2) Defendants offer no legal authority whatsoever to support the contention that film editing is not copyrightable in over three (3) years of litigation. 56. There is no dispute that the Defendants requested that Plaintiff perform film editing on Caveat. 57. There is no dispute that Plaintiff performed film editing on Caveat that is contained in the movie. 58. The Defendants credited Plaintiff as a film editor and this admission is attached to Plaintiffs Complaint as Exhibit 6. 59. The Ufema Defendants' ridiculous and fallacious legal argument that "Plaintiff applied for a copyright of her editing in May 2013 but had never sought permission from the Defendants to use the footage from Caveat" (Doc. 126, p. 3, ,-r1 0) is decidedly untrue: the Defendants invited Plaintiff to manipulate the raw video footage into a feature length film when the Defendants retained Plaintiff as a film editor. Page 17 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 18 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 18 of 35 60. Accordingly, the Ufema Defendants are absolutely correct in that there is no genuine dispute of material facts, however, it is the Defendants - both the Ufemas and Rich Coast Corporation - who violated Plaintiffs film editing copyright, namely P A 1-844-77 5, and that Plaintiffs copyright claims should be resolved in Plaintiffs favor forthwith. Defendants' 'Originality' and 'Creativity' Arguments Are Unfounded And Constitute An Unsupported and Insufficient Defense 61. Although entirely factually unfounded, the Ufemas aver that "Plaintiff could not articulate how her editing was substantially different than the editing that was done in the December 3, 2011 version or subsequent versions of the motion picture Caveat." (Doc. 126, ~12) Thusly, the Ufemas argue that Plaintiffs work lacked 'originality' and 'creativity' contradicting testimony from the Defendants secured prior to the commencement of discovery on October 29, 2013 which conceded this point. (Doc. 129-3, 10/29/2013 H.T., Lance J. Ufema, p. 90:7-17) 62. Further, Defendant Julie O'Connor Ufema agreed with Defendant Lance Jason Ufema that Plaintiff employed creativity during her May 16, 2016 deposition. (Doc. 129-4, 5/16/2016 Julie O'Connor Ufema Depo., pp. 128:22- 129:20) 63. Plaintiff testified that the Plaintiff selected camera shots to use during scenes and what moments to cut from one camera shot to another to make a moment more emotionally charged. (Doc. 129-6, 5/17/2016 Abbey Farkas Depo., Page 18 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 19 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 19 of 35 p. 150: 10-24) There is no support for the Defendants assertion that Plaintiffs work lacked 'originality' and 'creativity.' 64. All parties testified that Plaintiff's film editing work is in Caveat. (Docs. 129-4, 5116/2016 Julie Ufema Depo., p. 126:6-10; 129-5, Lance Jason Ufema depo., p. 82:6-9; 129-6 Abbey Farkas Depo., pp. 148:22-150:1) 65. In light of the uncontroverted testimony both before and during discovery, Plaintiff never previously had any need whatsoever to introduce the actual film, Caveat, into the evidentiary record. 66. Moreover, Julie O'Connor Ufema testified that she did not even review the film editing protected by Plaintiffs Copyright P A 1-844-77 5 in order to controvert 'creativity' and 'originality.' (See Exhibit E - 5/16/2016 Julie O'Connor Ufema Depo., p. 111:15-112:17) 67. Lance Jason Ufema testified that he also did not know what was protected by Plaintiffs Copyright PA 1-844-775 in order to controvert 'creativity' and 'originality.' (See Exhibit F- Lance J. Ufema Depo., pp. 34:1-36:1) 68. Lance Jason Ufema actually speculated that Plaintiffs copyrighted work "could be a bunch of cats playing on a playground." (ld. at p. 36:10-13) 69. The Ufema Defendants' newly introduced theory that Plaintiff's work is not 'original' and 'creative' was not present in their Copyright Counterclaims. (See Exhibit G, Ufema Defendants' Answer, pp. 37-40) Page 19 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 20 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 20 of 35 70. As articulated by the United States Supreme Court, it is well established that the threshold for 'original' work, under copyright law, is minimal, and a work is generally deemed 'original' if it is, to some degree, more than a mere copy of what came before. See Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 358-59, Ill S.Ct. 1282, 1294 (1991). 71. The Defendants allege both in their Answer to Complaint with Affirmative Defenses and Counterclaims and in their Motion for Partial Summary Judgment that Plaintiffs film editing contributions were 'minor' which would, in and of itself, indicate that the work exceeds the threshold by going beyond mere copy.(Docs. 78,p.39,~247; 126,p.5,~16) 72. The legal argument advanced by the Defendants is pablum and purposefully attempts to conflate the U femas' copyright in the Caveat script, raw film footage, and in any other aspect of the film with that of the film editing performed by Plaintiff. 7 By definition, the Plaintiff could not have manipulated footage, spliced scenes, determined which of the camera shots to select for inclusion in the final cut, or adjusted the color and sound in the raw footage in 7 It is important to note that these distinctions are well founded in copyright law. For example, in the music industry, a single song usually contains several copyrights: the music; the lyrics; the arrangement; the production; the performanc.e; the artwork or logo on the album cover or CD; and the band or stage or performer's name. Page 20 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 21 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 21 of 35 order for the Ufemas' argument to have any merit. Each of the aspects of film editing would transform the edited footage into something beyond a mere copy. 73. The Ufema Defendants adduce no facts to support their ridiculous assertion that Plaintiffs work failed to meet the threshold for 'originality' and 'creativity' nor do they controvert Plaintiffs testimony on the subject. (Doc. 129- 6, 5/17/2016 Abbey Farkas Depo., p. 150:10-24) 74. Next, the Ufemas argue that Plaintiffs contribution to Caveat was a "work made for hire" without ever clarifying whether Plaintiff was an employee or an independent contractor in their Motion for Partial Summary Judgment. 75. The Ufemas' pleadings and testimony allege that Plaintiff was an independent contractor which would legally require the U femas to have obtained a signed writing conveying the Plaintiffs film editing work to the Ufemas. 7 6. Pursuant to 17 U.S. C. § 1 01, a "work for hire" is defined either as a work prepared by an employee within the scope of employment or a work specially ordered for use as a part of a motion picture if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. 77. It is entirely unclear how the Ufema Defendants allege that there is no genuine issue of material fact that "Plaintiff and [Plaintiffs counsel] were aware that Plaintiff was not a valid author or co-author of the work at issue, that Page 21 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 22 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 22 of 35 Plaintiffs contribution to the work at issue was not copyrightable, and that Plaintiffs contribution to the work at issue was a 'work made for hire"' when (1) the Defendants invited Plaintiff to edit Caveat; (2) the Defendants testified that Plaintiff enjoyed creative license; (3) Plaintiffs work is contained in Caveat; ( 4) the Defendants deny that Plaintiff was an employee; and ( 4) Defendants agree that no signed written agreement defined Plaintiffs film editing as a 'work made for hire.' 78. Accordingly, this Court must strike the Defendants' copyright counterclaims which include unfounded and scandalous allegations that Plaintiff made "intentional misrepresentations" and "intentional deceived" the United States Copyright Office as there is absolutely no support whatsoever for these outrageous defamatory statements. (Doc. 126, p. 5, ,-r,-ri6-18) 79. The only "intentional misrepresentations" within this case are those of the Defendants' counsel whose demonstrated pattern of written and verbal intentional misrepresentations of a material nature to the Court concerning the Plaintiff and Plaintiffs counsel constitute a character assassination designed to obfuscate the unfavorable facts the case against his clients and the Rich Coast Corporation. See Supra. Page 22 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 23 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21116 Page 23 of 35 DEFENDANTS DO NOT HAVE A LEGALLY VIABLE DEFENSE TO COPYRIGHT INFRINGEMENT 80. All Defendants expressly deny possessing any written license or assignment of Plaintiffs Copyrighted film editing in their respective licenses in accordance with the Copyright Act, 17 U.S.C. §204. (Docs. 77, p. 10, ,-r49 and 78, p. 11' ,-r49) 81. The Ufema Defendants denied that Plaintiff was an employee in the Pennsylvania Court of Common Pleas (Doc.84-12, p. 3, First Set of Admissions, Request 22) and in their Answer to Plaintiffs federal Complaint. (Doc. 78, ,-ri) 82. Defendant Julie O'Connor Ufema testified that she considered Plaintiff an independent contractor. (See Exhibit H - Julie O'Connor Ufema Depo., p. 120:16-23) 83. Defendant Lance Jason Ufema testified that he considered Plaintiff an independent contractor. (See Exhibit I-Lance Jason Ufema Depo., p. 43:21-23) 84. The Ufema Defendants, however, withheld taxes from Plaintiffs paycheck (Doc. 84-14, p. 2) and issued a W-2 IRS tax form (Doc. 84-1, p. 2) as opposed to issuing Plaintiff a 1099 tax form and not withholding taxes. 85. The Defendants secured an insurance policy which required a written formal contract with independent contractors. (See Exhibit J - 5/16/2016 Julie O'Connor Ufema Depo., p. 120:24-121 :9; Exhibit K- 5116/2016 Julie O'Connor Page 23 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 24 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 24 of 35 Ufema Depo. Exhibit 8, Independent Contractors Liability Insurance Endorsement, ~II) 86. No written formal independent contractor Agreement exists between the Plaintiff and the Defendants. 87. Pursuant to state and federal law, the Ufema Defendants failed to pay Plaintiff minimum wage and never paid Plaintiff overtime when Plaintiff worked in excess of forty ( 40) hours per week. (See Exhibit L- 5/17/2016 Plaintiff Depo., p. 158:15-160:16- Plaintiffs uncontroverted testimony regarding minimum wage and overtime violations) 88. Without ever having viewed what comprised the copyrighted film editing subject to P A 1-844-775, the Ufemas inaccurately contend that "Plaintiff stated that she was the sole author of the film editing on the motion picture film, Caveat." 89. Plaintiff only claims a copyright over Plaintiff film editing which Plaintiff provided to the United States Copyright Office. (See Exhibit M - Plaintiff's Depo., p. 128:9-12- Plaintiffs uncontroverted testimony regarding only Plaintiff's work as the film editing included in P A 1-844-77 5) 90. Plaintiff directly provided the footage that she edited in order to confrrm that only the footage that Plaintiff edited is subject to PA 1-844-775. Page 24of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 25 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 25 of 35 91. As the Defendants have never bothered to examine the video footage subject to copyright under P A 1-844-775, there is absolutely no foundation from which to conclude that film editing by anybody other than Plaintiff was improperly included in the PA 1-844-775 as is alleged in the Defendants' averments. 92. That this Honorable Court has already held that the originality "is clearly an issue of fact" (Docs. 75, p. 8 and 76, p. 8) and there is no factual support to carry the Defendants' burden of proof, this issue is properly resolved by the entry of Summary Judgment against the Defendants concerning the validity of the copyright and the violation of Plaintiffs copyright. 93. No elicited testimony has controverted the Ufema Defendants' testimony that Plaintiffs work was 'original' and 'creative.' 94. The Ufema Defendants' Motion is outrageously disingenuous in alleging that there is any support for the position that Plaintiffs film editing was not 'creative' and 'original' pursuant to Copyright jurisprudence. 95. There is an extremely disturbing and ongoing pattern of conduct on the part of the Defendants in pleading averments that are utterly untethered to factual and legal support as required by the Federal Rules of Civil Procedure and the professional obligations of officers of the Court. 96. Specifically, the Federal Rules of Civil Procedure requrre that attorneys certify that Motions are "not being presented for any improper purpose;" Page 25 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 26 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 26 of 35 "claims, defenses, and other legal contentions are warranted by existing law;" and "factual contentions have evidentiary support." (Fed.R.Civ.P. 11(b)) 97. Accordingly, Defendants' Motion is improper and unsupported both factually and legally. 98. With the Ufemas' Motion for Partial Summary Judgment, the U femas' counsel has, once again, demonstrated either a lack of understanding or fundamental disregard for the contents of the Defendants' legal file, the law of the case, the rules of Court, Chamber rules, and prior Court Orders. 99. This is evidenced by filing a Motion for Partial Summary Judgment which requires certification from the movant that there is a reasonable belief formed after a reasonable inquiry that there exists no genuine dispute as to any material fact pertaining to Copyright. Asserting the presence of a 'creativity' and 'originality' Copyright defense that objectively controverts the testimony from all of the individual parties to this lawsuit does not reflect the absence of such a dispute in as much as it reflects a desperate and aspirational attempt to avoid Plaintiffs forthcoming Summary Judgment motion which was delayed by the Defendants' November 5, 2015 Motion to Strike Plaintiff's Motion for Summary Judgment and to Allow Additional Time for Discovery under Rule 56( d). (Doc. 94) 100. Specifically, this lack of understanding or fundamental disregard for the law of the case is evidenced by misrepresenting (and failing to correct) that Page 26of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 27 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 27 of 35 Plaintiff had produced no documents in discovery to a United States District Court Judge and the United States Chief Magistrate Judge. 1 01. This lack of understanding or fundamental disregard for the law of the case is evidenced by misrepresenting to the Court (and failing to correct) that there was confusion regarding whether the U fema Defendants had responded to all of Plaintiffs propounded discovery when objective evidence indicates that the Ufemas failure to respond to Plaintiff's Second Request for Production of Documents had been repeatedly communicated both verbally and in writing since June 2015. 102. This lack of understanding or fundamental disregard for the law of the case is evidenced by the Court-ordered Responses to Plaintiff's Second Request for Production of Documents Directed to Defendants which utterly mock the authority of this Honorable Court, the Order of Chief Magistrate Judge Martin C. Carlson, and this adjudicative process. (Doc. 129-1) 103. This lack of understanding or fundamental disregard for the law of the case is evidenced by the Ufemas' counsel claiming that no Privilege Log was produced to the U femas and to the Court while attaching the docketed Privilege Log to the Ufemas' Second Motion to Compel that the Ufemas filed seven (7) days prior to the October 31, 2016 teleconference wherein said misrepresentation was made. (Docs. 125 and 134-7) Page27 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 28 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21116 Page 28 of 35 104. This lack of understanding or fundamental disregard for the law of the case is evidenced by asserting that the Plaintiff abused the discovery process when discovery had been propounded within the parameters of the Joint Case Management Plan. (Doc. 58) Multiple teleconferences and extensive motions practice have failed to substantiate any of the charges leveled by the U femas' counsel. 105. This lack of understanding or fundamental disregard for the law of the case is evidenced by filing multiple Motions to Compel the Production of Documents propounded and responded to prior to the entry of appearance by the Ufemas' attorney only after being exposed to the Court for failing to cooperate during discovery. 106. This lack of understanding or fundamental disregard for the law of the case is evidenced by repeatedly refusing to confirm the existence of any unproduced documents when Plaintiffs Counsel attempted to work with the Ufemas' counsel, in good faith, to confirm the universe of correspondence. (Doc. 134-10) The Ufemas' counsel has repeatedly refused to cooperate and argued to the Plaintiff and to the Court that Plaintiffs discovery was closed (Doc. 130) and, therefore, the Defendants have been relieved of any obligation to cooperate in discovery and to supplement incomplete or erroneous discovery pursuant to Fed.R.Civ.P. 26. This is particularly illustrative of the improper purpose, i.e., Page 28of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 29 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 29 of 35 harassment, unnecessary delay, and needless increase in the costs of litigation, occasioned by the Ufemas' discovery Motions. 107. This lack of understanding or fundamental disregard for the law of the case is evidenced by filing Multiple Motions to Compel which have not met with any substantive success. 108. This lack of understanding or fundamental disregard for the law of the case is evidenced by the Ufemas' Counsel accusing Plaintiffs counsel of "highly improper," "ex parte communications" (Doc. 130) with the Court when Plaintiffs counsel placed the discovery dispute on the record pursuant to the Case Management Order (Doc. 62, p. 2, ,-riO); the Court's Standard Practice Order (Doc. 63, p. 3, ,-r2.2); and Chambers' Rules which require the moving party to electronically file a letter directed to the Judge. 109. The Ufemas' pleadings allege fraud on the part of the Plaintiff and Plaintiffs counsel in the absence of any factual support. These pleadings constitute a totally insufficient defense and employ scandalous aspersions of a professional nature in a desperate attempt at leverage. Accordingly, they must be stricken from the pleadings and should be removed from the electronic docket. 110. Plaintiff would also incorporate all associated pleadings with Plaintiffs Motion for Summary Judgment which include Docs. 89, 91, and 92. Page 29 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 30 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 30 of 35 111. In light of the foregoing, this Court must find that the U fema Defendants have no viable defense to Plaintiffs copyright claims (or any of Plaintiffs claims). 112. Plaintiff incorporates Document 129 and all attachments thereto in order to clarify the particularized need under Fed.R.Civ.P. 56( d) for all versions of the movie to be placed into the record in order to evaluate the averment that Plaintiffs work failed to achieve a requisite level of 'originality' or 'creativity.' 113. In that connection, Plaintiffs counsel has attached an affidavit (Exhibit N) explaining that Plaintiff cannot present verified versions of Caveat which are essential to establish that the Plaintiffs film editing was 'original' and 'creative' because this issue had, prior to the commencement of discovery and the filing of the Ufema Defendants' Motion for Partial Summary Judgment, been conceded in the Ufema Defendants' testimony, uncontroverted by the Plaintiff, established by Copyright Registration No. PA 1-844-775, and unnecessary to the Plaintiffs defense from the averments within Defendants' Counterclaim pleadings. 114. This information quite obviously would preclude summary judgment on the 'original' and 'creative' issue and clarify whether Plaintiffs work was essentially a mere copy as the Ufemas allege only at this late date. 115. This information, while previously unnecessary, may also assist the Court in adjudicating this matter going forward. Page30 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 31 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 31 of 35 116. Plaintiff attempted to secure this from the Defendants who have refused to cooperate. (See Exhibit 0- Correspondence with Ufema Defendants' counsel) WHEREFORE, Plaintiff respectfully requests that this Honorable Court deny, dismiss with prejudice, and strike Defendants' Motion for Partial Summary Judgment and grant summary judgment in favor of the Plaintiff on all pending copyright claims referable to Copyright Registration No. P A 1-844-775 in light of the absence of any genuine issue of material fact concerning the copyrightability of Plaintiff's film editing, the validity of the Plaintiffs copyright, and the Defendants' violation of Plaintiffs copyright. Should the Court decide to entertain the Ufema Defendants' Motion for Partial Summary Judgment, Plaintiff respectfully requests that the Ufema Defendants be ordered to produce the subject movie, Caveat, as it existed on December 3, 2011, and any and all other subsequent versions which have been publicly displayed and/or licensed and/or sold for submission into evidence with signed affidavits confirming when each movie version was displayed, sold, and/or licensed, and the profits associated with each version as it is clear that the Defendants advance an unsupported previously undisclosed defense at the eleventh hour. Page31 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 32 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 32 of 35 Additionally, Plaintiff requests that following the stx ( 6) months of adjudicating the discovery 'dispute' concerning the Ufema Defendants' refusal to respond to Plaintiff's written propounded discovery and the sufficiency of Plaintiff's responses and objections produced in response to the Ufema Defendants' First Request for Production of Documents Directed to Plaintiff on June 5, 2014, all Defendants be ordered to verify that no further divestments of property have occurred since the May 2016 depositions as the Ufema Defendants divested their property interests in their Worcester County, Maryland property for no monetary consideration and testified to selling real estate located on Wayne Street in Lewistown, Mifflin County, notwithstanding a Pennsylvania Uniform Fraudulent Transfer Act notice. (See Exhibit P -7/19/2013 Correspondence to the Ufema Defendants' counsel regarding the Pennsylvania Uniform Fraudulent Transfer Act; Lance Jason Ufema's testimony concerning property divestment; and the 9/28/2015 Deed transferring property from the Ufema Defendants to the sole shareholder of Rich Coast Corporation for no monetary consideration.) Page32 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 33 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 33 of 35 Date: November 21,2016 Page33 of35 Respectfully Submitted LAW OFFICES OF ROBERT RICHMAN Is/ RobertS. Richman Robert S. Richman Attorney for Plaintiff PA.I.D. 88673 Law Offices of Robert Richman 711 Woodland Drive Pittsburgh, PA 15238 T: (412) 401-0326 robrichman@hotmail.com Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 34 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 34 of 35 CERTIFICATE OF GOOD FAITH I, RobertS. Richman, certify that I have conferred with opposing counsel prior to filing the herein Motion in accordance with the Standard Practice Order (Doc. 63, p. 2, ~1.1) issued on June 2, 2014 on November 14, 2016 and have attached the correspondence. (See Exhibit 0) Thomas P. Heeney, Esq., does not concur. LAW OFFICES OF ROBERT RICHMAN By: Is/ Robert S. Richman Robert S. Richman, Esquire Pa.I.D. No.: 88673 Page34of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 35 of 36 Case 1:14-cv-00272-JEJ-MCC Document 141 Filed 11/21/16 Page 35 of 35 CERTIFICATE OF SERVICE I, RobertS. Richman, certify that on November 21, 2016, all counsel of record were sent a true and correct copy of the foregoing via electronic service: StephenS. Snook, Esq. Bierbach McDowell Zanic 20 South Wayne Street Lewistown, P A 17044 ssnook@bmzlaw.com Thomas P. Heeney, Jr., Esq. Heeney & Associates, P.C. 303 South Reading A venue Boyerstown, PA 19512 theeneyjr@gmail.com By: Is/ Robert S. Richman RobertS. Richman, Esquire Pa.I.D. No.: 88673 Law Offices of Robert Richman 711 Woodland Drive Pittsburgh, PA 15238 Page35 of35 Case 1:14-cv-00272-JEJ-MCC Document 144-3 Filed 12/06/16 Page 36 of 36 EXHIBIT4 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 1 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 1 of 31 IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF PENNSYLVANIA ABBEY FARKAS, Plaintiff v. RICH COAST CORPORATION, JULIE 0. UFEMA, and LANCE J. UFEMA d/b/a GROUP 13 PRODUCTIONS, Defendants CIVIL ACTION NO.: 1:14-cv-00272-JEJ-MCC Judge John E. Jones, III Chief Magistrate Judge Martin C. Carlson PLAINTIFF'S BRIEF IN SUPPORT OF MOTION TO ALLOW TIME FOR DISCOVERY UNDER RULE 56( d) AND/OR TO STRIKE THE UFEMA DEFENDANTS' MOTION FOR SUMMARY JUDGMENT Dated: November 30,2016 Counsel of Record for Plaintiff: Robert Richman, Esq. Pa.I.D. No.: 88673 Law Offices of Robert Richman 711 Woodland Drive Pittsburgh, PA 15238 T: (412) 401-0326 Attorney for Plaintiff Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 2 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 2 of 31 TABLE OF CONTENTS INTRODUCTION 1 I. LEGALSTANDARD 4 A. Motion to Strike 4 B. Summary Judgment 5 II. LEGAL ARGUMENT 6 A. Plaintiff Is Entitled To Summary Judgment Of The 6 Copyright Claims As A Matter Of Law B. Plaintiffs Registered Copyright Is Prima Facie Evidence Of A 7 Valid Copyright 1. Plaintiff Had Permission From The Defendants To Use Their 7 Underlying Work 2. Plaintiffs Work Is 'Original' And 'Creative' 9 3. Plaintiff Is The Author Of The Copyrighted Film Editing 12 4. Plaintiffs Copyrighted Film Editing Is Not A 'Work For 15 Hire' III. CONCLUSION 21 ii Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 3 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 3 of 31 TABLE OF AUTHORITIES CASES Anderson v. Liberty Lobby, Inc. 6 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) Balon v. Enhanced Recovery Co., Inc. 5 316 F.R.D. 96 (M.D. Pa. 2016) Banzai, Inc. v. Broder Bros. Co. 15 2009 WL 1285518 (E.D. Pa. 2009) Barnes v. American Tobacco Co. 8 161 F.3d 127 (3rd Cir. 1998) Bowers v. Nat'! Collegiate Athletic Ass'n 6 475 F.3d 524 (3rd Cir. 2007) Carone v. Whalen 5 121 F.R.D. 231 (M.D.Pa.1988) Celotex Corp. v. Catrett 6 477 U.S. 317, 106 S.Ct. 2548 (1986) Cipollone v. Liggett Group, Inc. 4 789 F.2d 181 (3rd Cir.1986) Community for Creative Non-Violence v. Reid 12 109 S.Ct. 2166 (1989) Dam Things from Denmark, a/lela Troll Company ApS v. Russ 9 Berrie & Company, Inc. 290 F.3d 548 (3rd Cir. 2002) Feist Publ'ns, Inc. v. Rural Tel. Service Co., Inc. 10 499 U.S. 340, Ill S.Ct. 1282, 113 L.Ed.2d 358 (1991) iii Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 4 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 4 of 31 Goode v. LexisNexis Risk & Info. Analytics Grp. 284 F.R.D. 238 (E.D.Pa. 2012) Haines & Kibblehouse, Inc. v. Balfour Beatty Constr., Inc. 553 Fed.Appx. 246 (3rd Cir. 2014) Heffernan v. City of Paterson 777 F.3d 147 (3rd Cir. 2015) Kaucher v. Cty. of Bucks 455 F.3d 418 (3rd Cir. 2006) Krisa v. Equitable Life Assurance Soc. 109 F.Supp.2d 316 (M.D. Pa 2000) Krystal Cadillac-Oldsmobile GMC Truck, Inc. v. General Motors Corp. 337 F.3d 314 (3rd Cir. 2003) Levinson v. Souser 384 Pa. Super. 132, 557 A.2d 1081 (Pa. Super. 1989) Masquerade Novelty, Inc. v. Unique Industries, Inc. 912 F.2d 663 (3rd Cir. 1990) Montrose Med. Group Participating Sav. Plan v. Bulger 243 F.3d 773 (3rd Cir. 2001) Natale v. Winthrop Res. Corp. 2008 WL 2758238 (E.D.Pa. July 9, 2008) National Assoc. for Stock Car Auto Racing, Inc. v. Scharle 184 Fed.Appx. 270 (3rd Cir. 2006) Norris Industries v. Internat'l Telephone & Telegraph Corp. 696 F.2d 918 (11th Cir. 1983) Ryan Operations G.P. v. Santiam-Midwest Lumber Co. 81 F.3d 355 (3rd Cir. 1996) iv 5 18 5 6 5 18 9 10, 15 9 5 8 12 17, 19 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 5 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 5 of 31 Scarano v. Central R. Co. of New Jers,ey 203 F.2d 510 (3rd Cir. 1953) Sturdza v. United Arab Emirates 281 F.3d 1287 (D.C. Cir. 2002) Sunbeam Corp. v. Liberty Mutual Insurance Co. 781 A.2d 1189 (Pa. 2001) Thomas v. Cumberland Cty. 749 F.3d 217, 222 (3rd Cir. 2014) United States v. Geppert Bros., Inc. 638 F.Supp. 996 (E.D.Pa.1986) Watson v. Eastman Kodak Co. 235 F.3d 851 (3rd Cir. 2000) Wickham v. Knoxville Int'l Energy Exposition, Inc. 739 F.2d 1094 (6th Cir. 1984) Yankee Candle Co., Inc. v. Bridgewater Candle Co., LLC 259 F.3d 25 (1st Cir. 2001) STATUTES 17 u.s.c. § 101 17 U.S.C. § 102 17 U.S.C. § 204 17 U.S.C. § 410 v 17 21 17 6 5 6 21 11 14, 15 13 14 7 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 6 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 6 of 31 RULES Federal Rule of Civil Procedure 12( f) 4,5 Federal Rule of Civil Procedure 56( a) 5 Federal Rule of Civil Procedure 56( d) 1, 4 TREATISES 74 AM. Jur.2d Torts 53 9 M. Nimmer & D. Nimmer, Nimmer on Copyright,§ 7.20 2 (1990) M. Nimmer & D. Nimmer, Nimmer on Copyright,§ 12.11[A] 10 (1990) Restatement (Second) of Torts§ 892 (1979) 8 Restatement (Second) of Torts§ 892A (1979) 9 TABLE OF EXHIBITS Exhibit A: May 16, 2016 Deposition Transcript of Julie O'Connor Ufema, p. 102:14-22. Exhibit B: Evidentiary Hearing Transcript (W.D. Pa. October 29, 2013) 2:13-cv-00926-LPL, p. 90:7-17. Exhibit C: May 17,2016 Deposition Transcript ofPlaintiff, p. 122:17-23. Exhibit D: May 16, 2016 Deposition Transcript of Julie O'Connor Ufema, pp. 125:5-126:5. Exhibit E: May 17, 2016 Deposition Transcript of Plaintiff, pp. 150:17-151:4, 152:16-153:14. vi Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 7 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 7 of 31 Exhibit F: May 16, 2016 Deposition Transcript of Julie O'Connor Ufema, p.111:19-112:25. Exhibit G: May 16, 2016 Deposition Transcript of Lance Jason Ufema, p. 34:1- 36:20. Exhibit H: Ufema Defendants' Reply Brief to Plaintiffs Motion to Dismiss Defendants' Counterclaims, July 22,2015, Doc. 87, p. 14 Exhibit I: Defendant Rich Coast Corporation's May 2, 2013 Responses to Plaintiffs Requests for Admissions (Court of Common Pleas of Allegheny County GD No.: AR 12-4819); Ufema Defendants' March 1, 2013 Responses to Plaintiffs Requests for Admissions (Court of Common Pleas of Allegheny County GD No.: AR 12- 4819); Ufema Defendants' March 25, 2015 Responses to Plaintiffs First Set of Requests for Admissions in the Middle District; Defendant Rich Coast Corporation's March 24, 2015 Responses to Plaintiffs First Set of Requests for Admissions in the Middle District; Ufema Defendants' June 5, 2015 Answer (Doc. 78, p. 1, ,-r1); Defendant Rich Coast Corporation's June 5, 2015 Answer (Doc. 77, p. 1, ,-rl); May 16, 2016 Deposition Transcript of Julie O'Connor Ufema, p. 120:9-19; May 16, 2016 Deposition Transcript ofDefendant Lance Jason Ufema, p. 43:21-23. Exhibit J: May 17, 2016 Deposition Transcript of Plaintiff, p. 158:3-160:16. vii Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 8 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 8 of 31 IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF PENNSYLVANIA ABBEY FARKAS, Plaintiff v. RICH COAST CORPORATION, JULIE 0. UFEMA, and LANCE J. UFEMA d/b/a GROUP 13 PRODUCTIONS, Defendants CIVIL ACTION NO.: 1:14-cv-00272-JEJ-MCC Judge John E. Jones, III Chief Magistrate Judge Martin C. Carlson BRIEF IN SUPPORT OF MOTION TO ALLOW TIME FOR DISCOVERY UNDER RULE 56( d) AND/OR TO STRIKE THE UFEMA DEFENDANTS' MOTION FOR SUMMARY JUDGMENT AND NOW COMES Plaintiff, by and through Robert S. Richman, Esq., of the Law Offices of Robert Richman, who files the within Brief in Support of Plaintiff's Motion to Allow Time for Discovery Under Rule 56(d) and/or to Strike the Ufema Defendants' Motion for Summary Judgment: INTRODUCTION This matter regards Defendants' willful infringement of Plaintiffs copyrighted film editing work (P A 1-844-77 5) on the independent motion picture, Caveat; Defendants' failure to validly remunerate Plaintiff under state and federal labor law; and Defendants' malicious prosecution and abuse of process occasioned by Defendants improperly initiating and maintaining legal proceedings against Page 1 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 9 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 9 of 31 Plaintiff which were dismissed with prejudice by the Mifflin County Court of Common Pleas. I Presently before the Court is Defendants' Motion for Partial Summary Judgment pertaining to the pending copyright claims. In response to Plaintiffs July 1, 2013 Complaint, Defendants both filed nearly verbatim June 5, 2015 counterclaims pertaining to the copyright issue in their substantially identical Answers. (Doc. 101, p. 2) Specifically, Defendants filed counterclaims seeking a declaratory judgment regarding the validity of Copyright Registration No. P A 1- 844-775 and alleging a second cause of action that Plaintiff intentionally perpetrated a fraud upon the United States Copyright Office. 2 Defendants argue that, at the time Plaintiff filed the application for copyright registration, Plaintiff (and Plaintiffs counsel) "were aware that Plaintiff was not a valid author or co- author of the work at issue, that Plaintiffs contribution to the work at issue was not copyrightable, and that Plaintiffs contribution to the work at issue was a 'work I The Ufema Defendants are re-asserting the replevin cause of action which was dismissed with prejudice by the Mifflin County Court of Common Pleas (CP-44- CV-817-2012) in these federal proceedings. (Doc. 78, Counterclaim IV, p. 42, ~~264-281; Doc. 84-10, pp. 2-3) 2 M. Nimmer & D. Nimmer, Nimmer on Copyright,§ 7.20, at 7-197 & 198 (1990): A misstatement or clerical error in the registration application if unaccompanied by fraud will not invalidate the copyright nor render the registration incapable of supporting an infringement action. Thus, Defendants desperately interpose the unsupported accusation of fraud in an attempt to defeat Plaintiffs valid copyright. Page 2 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 10 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 10 of 31 made for hire."' (Doc. 78, p. 38, ,-r241; See also Doc. 77, p. 42, ,-r239 (Defendant Rich Coast Corporation's identical averment)) After Plaintiff advised the Court that Defendants refused to respond to Plaintiff's Second Request for Production of Documents Directed to Defendants, this matter was referred to the Chief Magistrate Judge for the Middle District of Pennsylvania for resolution of the discovery 'dispute.' The Court ordered the Ufema Defendants to furnish the Plaintiff with "full and complete responses" to Plaintiff's Second Request for Production of Documents Directed to Defendants. (Doc. 113, pp. 1-2, ,-r1) The Ufema Defendants, in tum, produced a 'response' generally referring to unidentified discovery and nonspecific deposition testimony and asserting privilege in the absence of a privilege log such as the privilege log demanded in their Brief in Support of their Motion to Compel Production of Documents. (Doc. 141-4; Doc. 119, p. 9) Thereafter, the Ufema Defendants filed two Motions to Compel Discovery against Plaintiff which resulted in the Court conducting an in camera inspection of a document from Plaintiff counsel's legal file and appropriately determining that Plaintiff properly withheld the overtly privileged document. During the ongoing discovery 'dispute,' the U fema Defendants also filed a Motion for Partial Summary Judgment. Therein, the Ufema Defendants allege that there exists no genuine issue of material fact because: (1) Plaintiff has not Page3 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 11 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 11 of 31 presented any evidence of express perm1ss10n from Defendants to use their underlying work; (2) Plaintiff failed to testify about how the copyrighted work was substantially different from the raw video footage; (3) Plaintiff knew or should have known that Plaintiff was not the author of the work in question; and ( 4) that the work at issue was a 'work for hire.' The Defendants' Motion for Partial Summary Judgment fails to satisfy Defendants' burden of proof for summary judgment and does not set forth any facts that formulate a legally cognizable copyright defense, clarifying Plaintiffs entitlement to summary judgment. Accordingly, Plaintiff has filed a Motion to Allow Time for Discovery under Rule 56(d) and/or to Strike the Ufema Defendants' Motion for Summary Judgment. I. LEGALSTANDARD A. MOTION TO STRIKE Rule 12(±) allows the court to "order stricken from any pleading any insufficient defense or any redundant, immaterial, impertinent or scandalous matter." Fed.R.Civ.P. 12(±). The Third Circuit has instructed that a district court should grant a motion to strike a defense when the insufficiency of the defense is clearly apparent. Cipollone V. Liggett Group, Inc., 789 F .2d 181' 188 (3 rd Cir.1986). Motions to Strike serve a useful purpose by eliminating insufficient defenses and saving the time and expense which would otherwise be spent in Page 4 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 12 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 12 of 31 litigating issues which would not affect the outcome of the case. United States v. Geppert Bros., Inc., 638 F.Supp. 996, 998 (E.D. Pa.1986). "The purpose of a Motion to Strike is to clean up the pleadings, streamline litigation, and avoid unnecessary forays into immaterial matters." Goode v. LexisNexis Risk & Info. Analytics Grp., 284 F.R.D. 238, 243 (E.D. Pa.2012) (quoting Natale v. Winthrop Res. Corp., No. 07-4686,2008 WL 2758238, at *14 (E.D.Pa. July 9, 2008)). A "scandalous" matter or pleading is one that casts a derogatory light on someone, uses repulsive language, or detracts from the dignity of the court. Carone v. Whalen, 121 F.R.D. 231, 232 (M.D.Pa.1988). A Court may invoke Rule 12(£) to strike material from a pleading either on the timely motion of a party or by its own initiative. !d. Such motions should be granted when the allegations have no possible relation to the controversy, may cause prejudice to one of the parties, or confuses the issues. Balon v. Enhanced Recovery Co., Inc., 316 F.R.D. 96 (M.D. Pa. 2016). District courts have great discretion in granting a 12(£) motion to strike. Krisa v. Equitable Life Assurance Soc., 109 F.Supp.2d 316, 319 (M.D. Pa 2000) B. SUMMARY JUDGMENT Summary judgment is proper when the record, taken in its entirety, shows that "there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter oflaw." Fed.R.Civ.P. 56( a); Heffernan v. City of Paterson, 777 F .3d 14 7, 151 (3 rd Cir. 20 15). "An issue is genuine only if there is a sufficient Page 5 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 13 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 13 of 31 evidentiary basis on which a reasonable jury could fmd for the non-moving party, and a factual dispute is material only if it might affect the outcome of the suit under governing law." Kaucher v. Cty. of Bucks, 455 F.3d 418, 423 (3rd Cir. 2006) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). The court must "view the record in the light most favorable to the non-moving party and draw all reasonable inferences in that party's favor." Thomas v. Cumberland Cty., 749 F.3d 217, 222 (3rd Cir. 2014) (citing Bowers v. Nat'! Collegiate Athletic Ass'n, 475 F.3d 524, 535 (3rd Cir. 2007)). "A party's failure to make a showing that is 'sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial[,]' mandates the entry of summary judgment." Watson v. Eastman Kodak Co., 235 F.3d 851, 857-58 (3rd Cir. 2000) (quoting Celotex Corp. v. Catrett, 477 U.S. at 322, 106 S.Ct. 2548). II. LEGAL ARGUMENT A. PLAINTIFF IS ENTITLED TO SUMMARY JUDGMENT OF THE COPYRIGHT CLAIMS AS A MATTER OF LAW Currently pending before the Court are Plaintiffs claims for Copyright Infringement (Count 1), Contributory Copyright Infringement (Count III), and Vicarious Copyright Infringement (IV). Defendants have counterclaimed with a Declaratory Judgment of Invalidity of Copyright Registration No. P A 1-844-775 (Counterclaim I, Docs. 77 and 78) and Fraud on the U.S. Copyright Office Page 6 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 14 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 14 of 31 (Counterclaim II, Docs. 77 and 78). Plaintiff secured Copyright Registration No. PA 1-844-775 on May 23, 2013. (Doc. 22) Defendants failed to present probative evidence that rebuts Plaintiffs presumption and satisfies their burden of proof. B. PLAINTIFF'S REGISTERED COPYRIGHT IS PRIMA FACIE EVIDENCE OF A VALID COPYRIGHT Pursuant to 17 U.S.C. § 410(c): In any judicial proceedings the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate. The evidentiary weight to be accorded the certificate of a registration made thereafter shall be within the discretion of the court. Thus, there is no dispute that Plaintiff has produced prima facie evidence of validity. (Doc. 22) Further, Defendants' Answers admit that all Defendants "distributed the film Caveat which contained film editing work by Plaintiff." (Docs. 77, ~3 and 78, ~3) The Defendants credited Plaintiff as a film editor in Caveat. (Complaint, Exhibit 6) With this in mind, Plaintiff will address the Ufema Defendants' promulgated arguments in their pending Motion for Partial Summary Judgment. 1. Plaintiff had permission from the Defendants to use their underlying work Defendants' leading argument that Plaintiff lacked permission to use the raw Caveat video footage is entirely unfounded. There is no dispute that Defendants Page 7 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 15 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 15 of 31 invited Plaintiff to perform film editing on the motion picture. The Ufema Defendants' Answer expressly admits that "Plaintiff performed film editing work on the film Caveat at the request of Defendants JULIE UFEMA and LANCE JASON UFEMA." (Doc. 78, ,-r,-r21, 25, 26, and 43) Defendant Julie O'Connor Ufema submitted an affidavit (Doc. 12-3, ,-r21) and testified that she entered into a contract with Plaintiff to perform film editing on Caveat. (Exhibit A- 5/16/2016 Julie O'Connor Ufema Depo., p. 102:14-22). Likewise, Defendant Lance Jason Ufema submitted an affidavit (Doc. 12-4, ,-r21) and testified that Plaintiff was provided the raw video to edit. (Exhibit B - 10/29/2013 H.T., p. 90:7-17). Lastly, Plaintiff testified that Defendants asked Plaintiff to perform film editing. (See Exhibit C - 5/17/2016 Plaintiff Depo;, p. 122:17-23) Copyright law confers an implied license in order to effectuate the clear intent of the parties, i.e., that Plaintiff perform film editing for Caveat. National Assoc. for Stock Car Auto Racing, Inc. v. Scharle, 184 Fed.Appx. 270 (3rd Cir. 2006) Defendants clearly granted an implied license to manipulate the raw video footage into a feature length film when Defendants retained Plaintiff as a film editor. The Restatement (Second) of Torts § 892 states that if words or conduct are reasonably understood by another to be intended as consent, they constitute apparent consent and are as effective as consent in fact. See Barnes v. American Page 8 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 16 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 16 of 31 Tobacco Co., 161 F.3d 127, 148 (3rd Cir. 1998); Levinson v. Sauser, 384 Pa. Super. 132, 557 A.2d 1081, 1088 (Pa. Super. 1989); See also 74 AM. Jur.2d Torts§ 53. Furthermore, the Restatement (Second) of Torts § 892A (1979) provides that one who effectively consents to conduct of another intended to invade his interest cannot recover in an action of tort for the conduct or for harm resulting from it. !d. Additionally, Defendants cite no evidence that Plaintiff was ever paid in accordance with the contract or state and federal labor law. (Doc. 126) The Ufema Defendants are currently countersuing Plaintiff for a breach of contract to perform film editing on Caveat. (Doc. 78, Counterclaim III, pp. 41-42, ~~254-263) Defendants are equitably estopped from asserting a bad faith, irreconcilably inconsistent position in a manner designed to undermine the truth- seeking function of this adjudication. Dam Things from Denmark, a/Ida Troll Company ApS v. Russ Berrie & Company, Inc., 290 F.3d 548 (3rd Cir. 2002); Montrose Med. Group Participating Sav. Plan v. Bulger, 243 F.3d 773, 777-78 (3rd Cir. 2001). Therefore, Defendants' first argument constitutes a legally insufficient defense. 2. Plaintiff's work is 'original' and 'creative' When a Defendant challenges whether copyrighted material is "original," the presumption will not be overcome unless the Defendant offers proof that the Page 9 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 17 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 17 of 31 Plaintiffs product was copied from other works or similarly probative evidence as to originality. M. Nimmer & D. Nimmer, Nimmer on Copyright, § 12.11[A], at 12-83-85 (1990). Masquerade Novelty, Inc. v. Unique Industries, Inc., 912 F.2d 663 (3rd Cir. 1990). A composite of existing materials may qualify as 'original' so long as the aggregation of elements signifies additional creative effort by the author. Feist Publ'ns, Inc. v. Rural Tel. Service Co., Inc., 499 U.S. 340, 345-56, Ill S.Ct. 1282, 113 L.Ed.2d 358 (1991). Put simply, a work is generally deemed 'original' if it is, to some degree, more than a mere copy of what came before. See Feist Publ'ns, 499 U.S. at 358-59, Ill S.Ct. 1282. Defendants apparently assert that they have presented evidence that establishes that there is no genuine dispute as to the material facts of 'originality' and 'creativity' such that the movant is entitled to judgment as a matter of law. (Doc 126-1, Exhibit J, pp. 28-32) However, in actuality, Defendants have presented no probative evidence whatsoever that Plaintiffs film editing work constituted a copy to rebut Plaintiffs statutory presumption created by Registration No. PA 1-844-775. To the contrary, Defendant Julie O'Connor Ufema agreed with Defendant Lance Jason Ufema that Plaintiff employed creativity during her May 16, 2016 deposition. (Doc. 129-3, 10/29/2013 H.T., Lance J. Ufema, p. 90:7-17; Doc. 129-4, Page 10 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 18 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 18 of 31 5/16/2016 Julie O'Connor Ufema Depo., pp. 128:22-129:20; Exhibit D - Julie O'Connor Ufema Depo., 125:5-126:5) Technical choices are distinctly copyrightable. Yankee Candle Co., Inc. v. Bridgewater Candle Co., LLC, 259 F.3d 25, 36 (1st Cir. 2001) ("[C]hoices as to lighting, background, angle, and positioning are protected.") In that connection, Plaintiff's uncontroverted testimony clarified the requisite 'originality' and 'creativity' threshold: I chose which shots were the best, what moments I needed to cut from one shot to another. You know, when somebody's saying something, sometimes you want to be looking at that person's face that they're saying it to because that can make a moment more emotionally charged. So I made those sort of choices in the editing of the film along with more technical choices that were with regard to shot stabilization, minor audio corrections, things of that nature. Regardless of influence and opinions from other people, the editing work on Caveat that I did was my own. I made the choices of what felt right in the moment to the best of my abilities. You know, if the shot isn't there, the shot isn't there. Sometimes your hand is forced, but you have to come up with a creative solution to fix those sorts of problems. And it's not as easy as, well, obviously it's this and logically, it would be this. There's a feel and rhythm to editing that can be related to music, can be related to the movement of the people on the screen ... And that's where my own personal creativity came in. If somebody else came in and looked at this exact same pile of footage, they definitely would have come up with something different. (See Exhibit E- 5116/2016 PlaintiffDepo., pp. 150:17-151:4, 152:16- 153:14) Lastly, Defendants didn't review Plaintiffs copyrighted film editing subject to P A 1-844-77 5 in order to formulate a legal foundation from which to present a Page 11 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 19 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 19 of 31 viable 'originality' and 'creativity' argument. See Exhibit F - Testimony of Defendant Julie O'Connor Ufema; Exhibit G- Testimony of Defendant Lance Jason Ufema; and Exhibit H- Admission that neither the Ufema Defendants nor their counsel reviewed Plaintiffs copyrighted work (Doc. 87, p. 14). Thus, as a matter of law, Defendants' second argument constitutes a legally insufficient defense. 3. Plaintiff is the author of the copyrighted film editing The United States Supreme Court has stated that "[a ]s a general rule, the author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection." Community for Creative Non-Violence v. Reid, 109 S.Ct. at 2171 (1989). Thus, the default for legal authorship begins with the individual person and, in this instance, the Plaintiff. It is unclear why the Defendants suggest that Plaintiff, who performed the copyrighted film editing, would be in a greater position than the United States Copyright Office to make determinations about the validity of legal authorship. The Copyright Office's expertise in interpreting the copyright laws and applying them to the facts of copyright applications should be given deference. Norris Industries v. Internat'l Telephone & Telegraph Corp., 696 F.2d 918, 922 (11th Cir. 1983) As indicated above, Defendants agree (and fail to controvert) that Page 12 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 20 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 20 of 31 Plaintiff employed creative license in a motion picture. Pursuant to 17 U.S.C. § 102(a): Copyright protection subsists ... in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be · perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories: (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; ( 4) pantomimes and choreographic works; ( 5) pictorial, graphic, and sculptural works; ( 6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works. (emphasis added) Accordingly, it is unclear why Defendants contend that Plaintiff would, in any way, not qualify as both the actual and legal author of an original work in the statutorily delineated copyrightable motion picture subject matter category, in the absence of valid consideration, particularly when the United States Copyright Office awarded Plaintiff Copyright Registration P A 1-844-77 5. Furthermore, all Defendants denied that Plaintiff was an employee in their Answers (Doc. 77, ~~1, 44 and 78, ~~1, 44), responses to Plaintiff's Requests for Admissions both in state and federal court (Doc. 21 ); and in their testimony. (Doc. 77, ~~1, 44 and 78, ~~1, 44; Doc. 21, p. 15, ~36; Doc. 84-12, p. 3; Doc. 84-13, p. 3; Page 13 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 21 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 21 of 31 Doc. I4I-8; Doc. I4I-9; See Exhibit I) Pursuant to I7 U.S.C. § IOI/ Plaintiffs work would not be a 'work made for hire' because (a) the work was not prepared by the Plaintiff as an employee within the scope of employment; (b) Plaintiff was not validly paid as an employee; and (c) there was no signed written agreement that Plaintiffs film editing work would be considered a 'work made for hire.' (Docs. 77, p. IO, ~49 and 78, p. II, ~49) Therefore, pursuant to I7 U.S.C. § 204(a),4 which pertains to transfers of copyright ownership, the absence of a signed written agreement conveying Plaintiffs copyrighted film editing requires the fmding that no transfer of copyright occurred as the law does not recognize a valid transfer as it pertains to Plaintiffs copyrighted film editing. Therefore, in light of the fact that Defendants have proffered no evidence or applicable legal authority to support their contention that Plaintiff was not the actual or legal author of the copyrighted work, Defendants have failed to satisfy their burden of proof 3 A ''work made for hire" is- (I) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. (Emphasis added) 4 A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent. Page 14 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 22 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 22 of 31 required to rebut the copyrightability of Plaintiffs registered film editing copyright subject to PA 1-844-775. See Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 669 & n. 7 (3rd Cir. 1990); Banzai, Inc. v. Broder Bros. Co., 2009 WL 1285518 (E.D. Pa. 2009). As the scandalous allegations of professional fraud are inherently prejudicial to the reputations of both Plaintiff and Plaintiff counsel and are entirely devoid of factual and legal support, this Court must fmd that Defendants' counterclaims are defamatory and scandalous in a manner that detracts from the dignity of this adjudication, and, therefore, constitute an insufficient defense. 4. Plaintiff's copyrighted film editing is not a 'work for hire' Defendants desperately present invented false factual averments omitted from their Answer to Complaint with Affirmative Defenses and Counterclaims (Doc. 78), at the eleventh hour, in an overt attempt to dupe this Honorable Court into improvidently invalidating Plaintiffs copyright pursuant to P A 1-844-77 5. In doing so, Defendants continue to protract these federal proceedings which have been ongoing for nearly three and one-half(3Y2) years. As indicated above, a 'work made for hire' is specifically defined within the Copyright Act at 17 U.S.C. § 101. See supra, fu 2. Although Defendants conspicuously omit from their Motion for Partial Summary Judgment and Brief in Support thereto any analysis of the Plaintiffs Page 15 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 23 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 23 of 31 business relationship with Defendants, regardless of whether Plaintiff was (a) an independent contractor with whom no signed written instrument exists conveying Plaintiff's copyrighted film editing, or (b) an employee, to whom Defendants issued a W-2 Employee Wage and Tax Statement and from whom they withheld federal, state, and local taxes (Doc. 84-12), but, uncontrovertedly, failed to pay in accordance with state and federal minimum wage and overtime laws (See Doc. 81- 1; Exhibit J), Plaintiffs copyright could not constitute a 'work made for hire.' Should Plaintiffbe found to have been an 'employee,' Plaintiffs copyrighted work would not transfer for want of valid consideration pursuant to the legal maxim, commodum ex injuria sua nemo habere debet, interpreted to mean that a wrongdoer should not be enabled by law to take any advantage from his actions to prevent injustice. To do so would effectuate a double injustice as the 'employee' would not only be denied the benefit of fundamental labor protections, namely, lawful wages and overtime benefits in accordance with state and federal labor law, but would also be precluded from retaining the "employee's" copyrightable work as an individual would otherwise be able to do, in the absence of a signed written transfer, were the individual classified as an independent contractor. Such a result is wholly at odds with the legislative aims of both state and federal labor law and the Copyright Act. Page 16 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 24 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 24 of 31 Further, in state court discovery (Doc. 21, p. 15, ,-r36); Defendants' Answers herein (Docs. 77, ,-r,-r1, 44 and 78, ,-r,-r1, 44); and in Defendants' testimony (Exhibit D; Defendants asserted that Plaintiff was not an employee. As a fundamental matter of fairness, judicial estoppel applies as Plaintiff relied upon Defendants' state court assertions to confirm the presence of a copyright claim prior to initiating these proceedings.5 "Judicial estoppel, sometimes called the 'doctrine against the assertion of inconsistent positions,' is a judge-made doctrine that seeks to prevent a litigant from asserting a position inconsistent with one that the litigant has previously asserted in the same or in a previous proceeding" and is designed to prevent litigants from "playing 'fast and loose with the courts."' Ryan Operations G.P. v. Santiam-Midwest Lumber Co., 81 F.3d 355, 358 (3rd Cir. 1996) (citing Scarano v. Central R. Co. of New Jersey, 203 F.2d 510, 513 (3rd Cir. 1953)); Sunbeam Corp. v. Liberty Mutual Insurance Co., 781 A.2d 1189 (Pa. 2001). In order for judicial estoppel to apply, the following three (3) requirements must be met: First, the party to be estopped must have taken two positions that are irreconcilably inconsistent. Second, judicial estoppel is unwarranted unless the party changed his or her position "in bad faith-i.e., with intent to play fast and loose with the court." Finally, a district court may not employ judicial estoppel 5 See 18 C. Charles A. Wright & Arthur R. Miller et al., Federal Practice and Procedure § 4477 at 786 (1995) ("The [i]nconsistent position doctrine must not be allowed to interfere with the modem pleading rules that expressly permit pursuit of inconsistent positions within a single action.") (Emphasis added) Page 17 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 25 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 25 of 31 unless it is ''tailored to address the harm identified" and no lesser sanction would adequately remedy the damage done by the litigant's misconduct. Haines & Kibblehouse, Inc. v. Balfour Beatty Constr., Inc., 553 Fed.Appx. 246, 250 (3rd Cir. 2014) (citing Krystal Cadillac-Oldsmobile GMC Truck, Inc. v. General Motors Corp., 337 F.3d 314, 319-20 (3rd Cir. 2003)). Here, Defendants attempt to avail themselves of two (2) inconsistent positions notwithstanding their stated position that Plaintiff was not an employee in state court. The motivation to sustain these inconsistent positions is revealed by the associated consequences of Plaintiff's business relationship upon which the Defendants fail to elaborate in their Motion for Partial Summary Judgment which argues that there exists no genuine issue of material fact. If Plaintiff is an employee, Defendants cannot prevail in both the wage and hour claims and the copyright claims for lack of valid consideration. However, if Plaintiff is an independent contractor, Defendants will only necessarily lose the copyright claims. This reality concerning the unaddressed consequences demonstrates the bad faith of continuing to litigate as if the Defendants hadn't wed themselves to the position that they consider Plaintiff an independent contractor from their position in state court before the pending copyright claims were filed. Thus, the first and second requirements are clearly satisfied. Page 18of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 26 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 26 of 31 Judicial estoppel must be ''tailored to address the harm identified." Judicial estoppel is not a sanction "tailored to address the harm" if it does not, at a minimum, pass the "two-part threshold inquiry" set out in Ryan Operations: (1) Is the party's present position inconsistent with a position formerly asserted? and (2) If so, did the party assert either or both of the inconsistent positions in bad faith-i.e., "with intent to play fast and loose" with the court? With regard to the first inquiry, Defendants' nebulous and vacillating positions regarding Plaintiffs business relationship is inconsistent with Defendants' produced discovery in state and federal court. As to the second inquiry, Defendants have unreasonably protracted these proceedings with the specific design to reduce Plaintiffs resolve to seek legal redress for their tortious and deplorable behavior by escalating the costs of litigation. This behavior includes, inter alia, availing themselves of Plaintiffs unremunerated film editing; filing a retaliatory state court lawsuit, which was dismissed with prejudice, only to reassert the identical cause of action in these federal proceedings; presenting factually and legally unfounded affidavits and pleadings; and failing to cooperate during discovery. Defendants' behavior exemplifies bad faith. During this period, Defendants have also divested property for no monetary consideration in order to attempt to insulate themselves from the inevitable forthcoming judgment against them. (Doc. 104) The attempt to continue to litigate Page 19 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 27 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 27 of 31 as if these inconsistent positions represent a valid pleading in the alternative (without stating it as such) also fails to consider the cavalier defamatory accusations of professional fraud levied against the Plaintiff and Plaintiffs counsel which necessarily require, as a basis, that Plaintiff was an employee and that Plaintiff knew that Plaintiff was Defendants' employee. After all, Defendants do not contest the fact that no signed written instrument exists between the parties designating Plaintiffs film editing as a 'work made for hire.' (Docs. 77, p. 10, ~49; 78, p. 11, ~49) Sullying the professional reputation of the Plaintiff (and Plaintiffs counsel), by advancing scandalous accusations of fraud, in the absence of evidentiary support, and, while fraudulently transferring assets, is the height of hypocrisy and underscores the improper nature of Defendants' conduct during this protracted litigation. The Ufema Defendants fraudulently transferred real estate to Lance Waychoff Ufema, the sole shareholder of Rich Coast Corporation and father of Defendant Lance Jason Ufema. (Doc. 141-16) In light of the foregoing, this Court must find that the unsupported assertion that Plaintiffs work was a 'work made for hire' is an insufficient defense in that it is impermissibly counter to their adopted position and in furtherance of an immoral and unfounded smear campaign. Page 20 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 28 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 28 of 31 III. CONCLUSION "[G]ranting summary judgment, particularly in favor of a Defendant, is a practice to be used sparingly in copyright infringement cases." Wickham v. Knoxville Int'l Energy Exposition, Inc., 739 F.2d 1094, 1097 (6th Cir. 1984), quoted in Sturdza v. United Arab Emirates, 281 F.3d 1287, 1296 (D.C. Cir. 2002). While this case clearly does not warrant a fmding for Defendants, it does, as a matter of law, require a fmding in favor of Plaintiff This is because there is absolutely no genuine issue of material fact presented by either the evidence adduced by Defendants or the evidentiary record, as a whole: Plaintiff performed copyrighted film editing work subject to Copyright Registration No. P A 1-844-775, at Defendants' invitation, which was contained in the film, Caveat, that all Defendants distributed, without a signed written instrument defining licensure and/or assignment of Plaintiffs work and/or any contradictory evidence of valid employee wages under state and federal labor law. Accordingly, summary judgment must be granted in Plaintiffs favor as a matter of law. In the alternative, Defendants' legally unsupported Motion for Partial Summary Judgment must be denied, dismissed with prejudice, and stricken as it is replete with insufficient and scandalous defenses and fails, as a matter of law, because Defendants cannot possibly establish their burden of proof. At an absolute minimum, should the Court decline to dismiss Defendants' pending Page 21 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 29 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 29 of 31 Motion notwithstanding the undisputed contradictory testimony concerning their last minute 'originality' and 'creativity' defense, Defendants should be ordered to produce Caveat as it existed on December 3, 2011, and any and all other subsequent versions which have been publicly displayed and/or licensed and/or sold for submission into evidence with signed affidavits confirming when each movie version was displayed, sold, and/or licensed, and the profits associated with each version as Defendants advance a previously undisclosed defense at the eleventh hour in an attempt to effectuate a trial by ambush. Respectfully submitted, Is/ Robert S. Richman, Esq. ROBERTS. RICHMAN, ESQUIRE Attorney for Plaintiff Pa.I.D.: 88673 Law Offices of Robert Richman 711 Woodland Drive Pittsburgh, PA 15238 Page 22 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 30 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 30 of 31 CERTIFICATE OF COMPLIANCE In accordance with the applicable Rules, n~ely Local Rule 7.8(b)(2), the undersigned hereby certifies that the herein Brief in Support of Plaintiff's Motion to Allow Time for Discovery Under Rule 56(d) and/or to Strike the Ufema Defendants' Motion for Summary Judgment complies with the Local Rules as this Brief, although in excess of fifteen pages, is 4,978 words in length, and, therefore, does not exceed the 5,000 word limit. Respectfully submitted: BY: /s/ Robert Richman RobertS. Richman, Esquire Attorney for Plaintiff Page 23 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 31 of 32 Case 1:14-cv-00272-JEJ-MCC Document 142 Filed 11/30/16 Page 31 of 31 CERTIFICATE OF SERVICE I certify that a true and correct copy of Plaintiffs herein Brief in Support of Plaintiff's Motion to Allow Time for Discovery Under Rule 56( d) and/or to Strike the Ufema Defendants' Motion for Summary Judgment was served on this 29th day ofNovember 2016, via electronic service: Stephen S. Snook, Esquire Bierbach, McDowell Zanic 20 South Wayne Street Lewistown, P A 17044 Attorney for Defendant, Rich Coast Corporation Thomas P. Heeney, Jr. Esq. Heeney & Associates, P.C. 303 South Reading A venue Boyerstown, PA 19512 Attorney for Defendants Julie Ufema and Lance J. Ufema Is/ RobertS. Richman, Esq. ROBERT S. RICHMAN, ESQUIRE Attorney for Plaintiff Page 24 of24 Case 1:14-cv-00272-JEJ-MCC Document 144-4 Filed 12/06/16 Page 32 of 32 EXHIBIT 5 Case 1:14-cv-00272-JEJ-MCC Document 144-5 Filed 12/06/16 Page 1 of 3 • • • Exam./Heeney -- Abbey B. Farkas 1 Q So what's your answer to the 2 question? 3 A And I lost my train of thought. I'm 4 sorry. One more time. 5 6 7 8 9 10 11 12 13 MR. HEENEY: Can you ask the question again, please? COURT REPORTER: Yes. So to be clear, the only thing you've ever done in order to protect your alleged copyright is make a registration with the Copyright Office and file this lawsuit? A After it became clear to me in the course of these proceedings that the Ufemas had 14 taken the position that I was not an employee, I 15 felt it necessary to file for a copyright for my 16 editing work to protect my original creative 17 work. And that's the only thing that I've done 18 to protect it. 19 BY MR. HEENEY: 20 Q so did you ever receive a license 21 from anybody to use the underlying footage in 22 your copyright filing? 23 24 25 MR. RICHMAN: Objection, calls for a legal conclusion. MR. HEENEY: Not really. Geiger Loria Filius McLucas Reporting, LLC York 717-845-6418 Harrisburg 717-541-1508 Ton Free 1-800-233-9327 118 Case 1:14-cv-00272-JEJ-MCC Document 144-5 Filed 12/06/16 Page 2 of 3 Exam./Heeney - Abbey B. Farkas • 119 1 BY MR. HEENEY: 2 Q But please answer the question. Any 3 license exists? 4 A I have no paperwork that I signed 5 for use of the 6 Q so no agreement that says license 7 agreement? You've never signed such a document? 8 A I don't recall. 9 Q And there's no e-mails that exist 10 that say you can use the underlying works? 11 A Not that I recall. • 12 Q And you never asked the Ufemas 13 whether you could use the underlying works, did 14 you? 15 A I don't think that -- 16 MR. RICHMAN: Objection. That 17 mischaracterizes evidence of record. The 18 Ufemas are on record having testified 19 yesterday that they asked her to perform 20 this work. That was the testimony that 21 was yesterday. 22 So I believe that it's a 23 mischaracterization of evidence to consent to utilize this. • 24 suggest that there wasn't explicit 25 Geiger Loria Filius McLucas Reporting, LLC York 717-845-6418 Harrisburg 717-541-1508 Toll Free 1-800-233-9327 -------------------- -··---·· .. Case 1:14-cv-00272-JEJ-MCC Document 144-5 Filed 12/06/16 Page 3 of 3 EXHIBIT 6 Case 1:14-cv-00272-JEJ-MCC Document 144-6 Filed 12/06/16 Page 1 of 5 Exam./Heeney -- Abbey B. Farkas • 1 don't think I have a whole lot more. The 143 2 questions are kind of like filling in the 3 checkboxes that I have. 4 BY MR. HEENEY: 5 Q So getting back to -- let me ask you 6 this question. The film that aired at the 7 premiere -- and presumably the premiere was 8 December 3rd, 2011 -- to your knowledge, is that 9 the final film product of Group 13 and Mr. and 10 Mrs. Ufema? 11 MR. RICHMAN: I'm just going to • 12 13 place a characterization as to the nature of Mr. and Mrs. Ufema and Group 13 14 Productions, but go ahead and answer. 15 A I'm not sure what you mean by film 16 product. 17 BY MR. HEENEY: 18 Q Was that the -- as you know it as 19 you sit here today, is that Group 13's final 20 product of the film? Is that their -- 21 A Are you asking if that's the final 22 version of Caveat? 23 Q Yes. That the Ufemas and Group 13 A As far as I know, the version of the • 24 25 have, yes. Geiger Loria Filius McLucas Reporting, LLC York 717-845-6418 Harrisburg 717-541-1508 Toll Free 1-800-233-9327 Case 1:14-cv-00272-JEJ-MCC Document 144-6 Filed 12/06/16 Page 2 of 5 Exam./Heeney -- Abbey B. Farkas • 1 film that I -- of Caveat that I saw on or about 144 2 December 3rd, 2011 was the final version before 3 -- you know, obviously they're saying that they 4 want to remaster it, so I don't know if 5 anything's happened in the meantime. 6 Q Are you claiming a copyright to that 7 version? 8 A I'm claiming that -- well, I'm not 9 claiming my copyrighted work was present in 10 that version of the film. 11 Q Was 100 percent of, forgive me, your • 12 13 alleged copyright was 100 percent of your alleged copyright contained in that version of 14 the film? 15 A 100 percent of my copyrighted work 16 was not present in that film. 17 Q If you can, can you estimate how 18 much, in terms of percentage, of your alleged 19 copywritten material was contained in that 20 version, if you can? 21 MR. RICHMAN: I just want to put an 22 objection because I don't know -- is it a 23 percentage of the film length? Is it a percentage of the editing work? I don't understand what the percentage would • 24 25 Geiger Loria Filius McLucas Reporting, LLC York 717-845-6418 Harrisburg 717-541-1508 Toll Free 1-800-233-9327 Case 1:14-cv-00272-JEJ-MCC Document 144-6 Filed 12/06/16 Page 3 of 5 Exam./Heeney -- Abbey B. Farkas 145 1 represent. And I don't mean to be 2 difficult, but we're trying to be 3 specific. 4 MR. HEENEY: No, that's fair. 5 BY MR. HEENEY: 6 Q The percentage of your editing work. 7 A With regards to the edits 8 themselves? 9 Q So I'll try to restate it again. 10 A Sure. 11 Q So looking at that film that aired 12 • 13 at the premiere, percentage-wise, how much of your editing work product appeared on that film? 14 A Honestly, I couldn't give you an 15 estimate. When I watched the film, I noticed 16 I mean, I recognized my edits when I watched the 17 film. It's been almost five years, and I haven't 18 seen the film since, so I can't give you an exact 19 number. 20 Q If I may, was it under 50 percent? 21 A Again, I really couldn't give you a 22 percentage. 23 Q No idea at all? Q • 24 25 A I recognized my work. Did you recognize editing work of Geiger Loria Filius McLucas Reporting, LLC York 717-845-6418 Harrisburg 717-541-1508 Toll Free 1-800-233-9327 Case 1:14-cv-00272-JEJ-MCC Document 144-6 Filed 12/06/16 Page 4 of 5 Exam./Heeney -- Abbey B. Farkas 146 •• 1 others? 2 A Yes. 3 Q Did you recognize a lot of editing 4 work of others? 5 A Again, if I can't estimate what 6 percentage was mine, I can't estimate what 7 percentage was the work of others. 8 Q I'm not asking you to do that. I 9 was asking you whether you recognized the editing 10 work of a lot of other people, like, several 11 other people? 12 • 13 A The thing is that I don't know exactly who -- in an editing capacity exactly who 14 touched the film after I -- well, after I 15 completed my work on the film. 16 Q Were you, at one time, working on an 17 alternate title sequence? 18 A I was working on a title sequence 19 for the film at one point. I don't know if we 20 referred to it as alternate or what terms we used 21 to refer to it. 22 Q But that does strike a bell to you; 23 correct? sequence for the film, yes. • 24 25 A I know that I worked on a title Geiger Loria Filius McLucas Reporting, LLC York 717-845-6418 Harrisburg 717-541-1508 Toll Free 1-800-233-9327 Case 1:14-cv-00272-JEJ-MCC Document 144-6 Filed 12/06/16 Page 5 of 5 EXHIBIT 6 Case 1:14-cv-00272-JEJ-MCC Document 144-7 Filed 12/06/16 Page 1 of 5 Exam./Heeney -- Abbey B. Farkas 24 1 agree? Half-an-hour travel time? 2 A Depends on what you're used to, I 3 guess. Q A 5 At the time, it seemed' fairly close, 6 yeah. 7 Q Do you travel to work now? 8 A I do. I walk about 40 minutes. 9 Q That's a long walk. Okay. So for 10 $750 -- you understood you were getting paid $750 11 per month for your film editing work, and you • 12 13 were to work with other editors. A (Witness nods head. ) 14 Q At that time, how many editors did 15 you understand you would be working with? 16 A I can't remember the number, 17 honestly. There would be Mike Calabro, Coalin 18 Smith, Mitch Cleaver -- 19 Q Jon Craig? 20 A -- Jon Craig, Bob Taylor. Some of 21 those people didn't ultimately end up 22 participating in the edit of the film itself. 23 Q So Amanda didn't participate in the • 24 editing; correct? Or did she? 25 A I can't say with certainty. Geiger Loria Filius McLucas Reporting, LLC York 717-845-6418 Harrisburg 717-541-1508 Toll Free 1-800-233-9327 Case 1:14-cv-00272-JEJ-MCC Document 144-7 Filed 12/06/16 Page 2 of 5 Exam.!Richman --Julie 0. Ufema 55 1 Q was anyone 2 A Yes. 3 Q -- editing the film in July of 2011? 4 A I don't know if anybody was editing 5 at that point, but there were multiple editors. 6 Q Do you know the names of those 7 individuals? 8 A Yes. I had Collin -- Coalin -- 9 sorry Coalin. 10 Q Smith? 11 A Yes. • 12 13 Q A Coalin, C-0-A-L-I-N? No. I think it's -- is it A-I-N? I 14 don't know. I don't remember how to spell his 15 name . And Jon shoot, I can't remember his 16 last name either. And Amanda did some editing. 17 And -- 18 Q Would that be Craig, Jon Craig? 19 A Jon Craig, yes. They're all in the 20 credits. 21 Q And these people were all there 22 before Ms. Farkas; correct? 23 A I believe so. C-A-L-A-B-R-0? • 24 25 Q What about Mike Calabro, Geiger Loria Filius McLucas Reporting, LLC York 717-845-6418 Harrisburg 717-541-1508 Toll Free 1-800-233-9327 Case 1:14-cv-00272-JEJ-MCC Document 144-7 Filed 12/06/16 Page 3 of 5 Exam./Richman --Julie 0. Ufema 56 1 A He came in later. 2 Q Mitchell Cleaver, C-L-E-A-V-E-R? 3 A He was supposed to work on a teaser, 4 and I don't know that I ever got it. But I don't 5 think he actually worked on the film, the editing 6 of the film. He was our director of photography, 7 so he was mostly a shooter. 8 Q So he would interact but not 9 necessarily perform film editing? He would 10 interact with the others? 11 A He wasn't brought on to he was • 12 13 brought on to shoot. He volunteered to edit something for me. 14 Q Who was Bob Taylor? 15 A Bob Taylor was our consistency guy. 16 He was the one that was supposed to make sure 17 that everything on the film played out 18 consistently. If the glass was half full of 19 water when the shot was over, it had to be half 20 full again. 21 Q so the editors that we've talked 22 about, as I understand from you, are Coalin 23 Smith, Mike Calabro -- Q -- Mitch Cleaver, but didn't really • 24 25 A Mm-hmm. Geiger Loria Filius McLucas Reporting, LLC York 717-845-6418 Harrisburg 717-541-1508 Toll Free 1-800-233-9327 Case 1:14-cv-00272-JEJ-MCC Document 144-7 Filed 12/06/16 Page 4 of 5 • • Exam.!Richman --Lance J. Ufema 1 very little in the post-production part. 2 Q So you would agree that Rich Coast 3 Corporation resources were utilized during the 4 production of Caveat? 5 A Yes. 6 Q Other than Mike Calabro, Amanda 7 Burns, Jon Craig, or Coalin Smith, are there any 8 other names that you're aware of performing film 9 editing work? 10 A Keith Hodne was the audio editor. 11 Q Do you know when these individuals 12 carne on board? 13 A I don't. 14 Q How about if I was just to ask 15 relative to the Plaintiff, was it before or after 16 the Plaintiff was involved with the Caveat 17 post-production? 18 A Listening to Julie's testimony here 19 earlier today, there were a few things that were 20 a little inconsistent in my mind. Mike Calabro 21 actually worked on the film prior to becoming an 22 editor. He was actually one of the shooters and 23 helped with setting up shots and stuff like that. 24 Q Shooters meaning a cameraman? 25 A Cameraman. But the tirneline of that Geiger Loria Filius McLucas Reporting, LLC York 717-845-6418 Harrisburg 717-541-1508 Toll Free 1-800-233-9327 27 Case 1:14-cv-00272-JEJ-MCC Document 144-7 Filed 12/06/16 Page 5 of 5 THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF PENNSYLVANIA ________________________________________________________________________ ABBEY FARKAS : Plaintiff : : vs. : CASE NO. 14-00272 : RICH COAST CORPORATION : JUDGE JOHN E. JONES, III : and : MAGISTRATE JUDGE CARLSON : JULIE O. UFEMA : : and : : LANCE J. UFEMA : [Defendants’ proposed] ORDER D/B/A GROUP 13 PRODUCTIONS : Defendants : : ________________________________________________________________________ ORDER AND NOW, this ____ day of _____, 2016, it is hereby ODERED AND DECREED that Plaintiff Abbey Farka’s Motion to Allow Time for Discovery Under Rule 56(d) (Doc. 141), is DENIED. DATED: ____________ ____________________________ Martin C. Carlson United States Magistrate Judge Case 1:14-cv-00272-JEJ-MCC Document 144-8 Filed 12/06/16 Page 1 of 1