Free Response in Opposition to Motion - District Court of Arizona - Arizona

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MESCHKOW & GRESHAM, P.L.C.
Jordan M. Meschkow (AZ Bar No. 007454) Lowell W. Gresham (AZ Bar No. 009702) 5727 North Seventh Street Suite 409 Phoenix, Arizona 85014-5818 (602) 274-6996 (602) 274-6970 (facsimile) Attorneys for Plaintiff

GILES LEGAL, P.L.C.
Nancy R. Giles (AZ Bar No. 020163) 733 West Willetta Street Phoenix, Arizona 85007 (602) 252-1788 Attorney for Plaintiff

UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA DAN COOGAN, doing business as COOGAN PHOTOGRAPHIC, Plaintiff, v. AVNET, INC., et al. Defendants. Case No.: CV-04-0621 PHX SRB PLAINTIFF DAN COOGAN'S RESPONSE TO AVNET'S MOTION TO WITHDRAW ADMISSION AND TO ENTER DENIALS AS TO REQUESTS TO ADMIT NOS. 15 AND 43 OF AVNET'S RESPONSES TO PLAINTIFF'S THIRD REQUESTS FOR ADMISSIONS (sic)

Plaintiff Dan Coogan ("Coogan") hereby responds to Defendant Avnet's Motion to Withdraw Admission and to Enter Denials as to Requests to Admit Nos. 15 and 43 of Avnet's Responses to Plaintiff's Third Requests for Admissions (sic). Defendant's Motion seeks to withdraw its prior admissions to Requests to Admit Nos. 15 and 43 of the Plaintiff's Third Request for Admissions and enter a denial of these Requests, claiming that, claiming that 1) Entry of such an Order will promote resolution of the merits; and 2) Entry of such an Order will not prejudice Mr. Coogan in maintaining his claim. Neither could be further from the truth, as Avnet itself shows in the Motion.

Case 2:04-cv-00621-SRB 8050-0131-196-1

Document 196 1 Filed 05/02/2006

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MEMORANDUM OF POINTS AND AUTHORITIES

This case was filed March 29, 2004, and on October 24, 2005, this Court ruled that Defendants willfully infringed upon Plaintiffs' copyrighted photographs, leaving damages and the liability of the individual defendants as the only remaining major issues in the case. See Opinion and Order of 24 October 2005, Document No. 100, pages 13 and 14. Early between those dates, and as the very first discovery requests issued in the case, on September 27, 2004, Plaintiff served written discovery requests on Defendants that included requests for any documents demonstrating or evidencing any and all of Defendants' uses of Plaintiff's copyrighted photographs, and the following interrogatory and document request: · Interrogatory No. 4: State the date (month, day, and year) and circumstances concerning Defendants' first use and all subsequent uses of Plaintiff's Photographs of Roy Vallee and the manner and extent of such first and all subsequent uses, whether on an Avnet website, a third-party website, or in any report or publication. · Document Request No. 1: All documents that Defendant was required to identify or did identify in its response to Plaintiff's First Set of Interrogatories to Avnet. See Defendants' Responses to Plaintiff's First Set of Interrogatories to Defendant Avnet, Inc. and to Plaintiff's First Request for Production of Documents to Defendants, September 27, 2004, attached as Exhibit B to Document #108, incorporated by reference herein. Since propounding this discovery in September 2004, and up until March 2006 (and to after discovery closed), the only other answer to these discovery requests was the similarly obtuse and incomplete answers in Defendants' Supplemental Responses to Plaintiff's First Set of Interrogatories to Defendant Avnet, Inc. (including the obtuse and incomplete answer to Interrogatory No. 4), the entire Supplemental Responses attached as Exhibit E to Document #108 (and dated March 30, 2004 (sic), but served under Document # 53, dated 3/30/2005). During the course of this action, Plaintiff has had to make so many attempts to get Defendants to identify each of its infringing uses of Plaintiff's photographs, that this resulted in numerous letters and discussions between
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counsel, with a first Motion to Compel on March 2, 2005 (Document #47, and incorporated by reference herein) and a second Motion to Compel on September 27, 2005 (Document #91, and incorporated by reference herein), both referencing and discussing in full, Interrogatory No. 4. See Document #47 at ¶2 and Document #91 at ¶¶ 1 and 6. It also has forced numerous additional discovery requests, including but not limited to over 320 admissions in Plaintiff's Second Request for Admissions to Defendant Avnet, Inc.1 and Plaintiff's Third Request for Admissions to Defendant Avnet, Inc.2 Nonetheless, Defendants continued, and continue, to refuse to fully answer these discovery requests. On March 14, 2006, a year and a half after the Plaintiff's first document requests and interrogatories to Defendants and after discovery closed, Plaintiff received Avnet's Second Supplemental Response to Plaintiff's First Set of Interrogatories, attached as Exhibit D to Plaintiff's Motion in Limine, incorporated by reference herein, in which Defendants purport to finally identify each of their multiple infringing uses of Plaintiff's photographs. Yet, Avnet did not issue an update to Document Request No. 1, above, in connection with its newly updated Interrogatory answer even though Avnet identified new documents therein. Between this, and Defendants' deceitfulness throughout this case, as well as the inconsistencies in Defendants' responses, Plaintiff remains wary of the completeness of Defendants' answers. Avnet now states, long after the close of discovery, "Avnet undertook a review of its Answers to Interrogatory No. 4 and the facts in support of those answers. To the extent that new or different information was discovered, Avnet supplied the information." First, Avnet had an obligation to conduct such a review and investigation long before discovery closed. Second, Avnet did not make this revelational discovery until Plaintiff filed his Motion to preclude Avnet from contradicting prior admissions in this case. Only then did Avnet file this Motion to suddenly refute those prior admissions that they now realize See Responses to Plaintiff's Second Request for Admissions to Defendant Avnet, Inc., attached to Document #60, and incorporated by reference herein with 188 admissions. 2 See Responses to Plaintiff's Third Request for Admissions to Defendant Avnet, Inc. attached to Document #180, and incorporated by reference herein, with 148 admissions.
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could be harmful to their case. Avnet should not be allowed to maintain only admissions that it views as favorable to its case. Additionally, Avnet gives no explanation for its conflicting answers. Neither does Avnet say the first answers were wrong! Avnet just wants to withdraw them and have them changed to denials, when: 1) 2) 3) 4) 5) Avnet does not say whether either the admission to #15 or the admission to #43 was inadvertent; Avnet does not explain how or why this information was previously unknown to it; Avnet does not say when or how this information was suddenly discovered; Avnet provides no verification from a responsible employee knowledgeable about its web-content; and Avnet provides no documentary proof of its 2002 or 2003 home page content.

If Avnet "suddenly" discovered that none of Plaintiff's photographs ever showed up on their home page, this Court should first order them to prove this fact conclusively, and how Avnet discovered that fact, because according to admissions 15 and 43 Avnet admits "at the time that YOU won at least one Stevie Award concerning YOUR website, the home page of www.avnet.com carried at least one of PLAINTIFF'S PHOTOGRAPHS" and that "in 2002 Avnet.com (http://www.avnet.com) bore at least one of PLAINTIFF'S PHOTOGRAPHS directly on the home page for this website" and Avnet cannot even furnish the web pages attached to the Complaint. Moreover how could a new investigation show admission #15 is incorrect? When Avnet was asked for "Copies of any and all documents concerning Avnet winning at least one Stevie Award regarding its websites on or about March 2004 (see Exhibit A)" Avnet answered on December 28, 2005: "See documents previously produced as Bates Nos. AVN0079-80. See also documents attached as Exhibit A to plaintiffs Fourth Request for Production. Avnet will supplement this Response no later than January 6, 2006 if additional documents are discovered.." and no copies of the Award submission (including the winning website) or the Award itself have been produced, nor has any supplement been made, by January 6, 2006, or otherwise. See Avnet's Responses to Plaintiff's Fourth Request for Production of Documents to
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Avnet. Inc. (Exhibit D to Document 192, herein incorporated by reference, a true copy of Exhibit A thereto (a Reuters article concerning the win) and AVN0079-80, none of which are copies of the Award submission (including the winning website) or the Award itself, both attached hereto as Exhibit A. Avnet has consistently maintained that they do not have documents or information to trace the history of their web site; thus, Plaintiff, and this Court are left with no answers as to how Avnet has suddenly found information capable of proving the errors of admission ## 15 or 43. Admittedly, Avnet has produced a log of hits related to Plaintiff's photographic image on Avnet's home page from January 2004 to February 2004 (as well as logs of hits for Plaintiff's photographic image on Avnet's web site on other pages), but Avnet has produced no documents related to its web pages or its home pages for the period of infringement since this matter commenced. ARGUMENT As stated in Avnet's Motion, "Permitting withdrawal or amended (sic) of responses to requests to admit is governed by Rule 36(b), Fed. R. Civ. P. The Rule, in applicable part, says: Subject to the provision of Rule 16 governing amendment of a pretrial order, the court may permit withdrawal or amendment when the presentation of the merits of the action will be subserved thereby and the party who obtained the admission fails to satisfy the court that withdrawal or amendment will prejudice that party in maintaining the action or defense on the merits." Motion at 2. Yet Avnet wrongly states the first part of the two-part test: "Permitting Avnet to amend its responses to the two Requests to Admit will advance the decision on the merits. Avnet has admitted infringing Plaintiff's copyrighted photographs. On this issue, the question is one of damages. Use on the homepage of the website is a more valuable use than placing the photograph in some other position on a website. Motion at 2. In this case, the decision on the merits includes both a finding of infringement (found by this Court as willful) and the damages for that infringement. As Avnet admits, "Use on the homepage of the website is a more valuable use than placing the photograph in
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some other position on a website[,]" showing that these two admissions on home page use heavily impact damages. See On Davis v. The Gap, Inc., 246 F.3d 161 (2nd Cir. 2000) ("the owner's actual damages may include in appropriate cases the reasonable license fee...[,]". The Davis holding demonstrates that the reasonable license fee may change markedly based on whether the use is more valuable, so this only serves Avnet who wants to contest its use of the images on the home page of its website, not the decision on the merits of the case). Presumably Avnet is arguing that it should be allowed to change its admission that Plaintiff's photographs showed up on its home page because such an admission will cause Plaintiff's damages to be higher. Avnet is correct regarding the calculation of damages, but gives no reason why this should lead to an elimination of their prior admission. The second prong of the Rule 36 test examines whether "the party who obtained the admission fails to satisfy the court that withdrawal or amendment will prejudice that party in maintaining the action or defense on the merits." Here, however, it is Avnet that fails miserably, not Plaintiff. Admissions 15 and 43 were admitted before discovery closed, and before Plaintiff completed his depositions of defense witnesses. Plaintiff's opportunity to further conduct discovery from a September 2004 interrogatory has been prejudiced. Additionally, Avnet claims that, due to its claimed inability to locate records of its web site history, Avnet is "the only source of information on the subject of when the photograph was used on the homepage and when it was not." Motion, page 2 at line 22. During the pre-filing investigation for this case and recently for a disclosure statement, Plaintiff (and the undersigned counsel) used a web-tool called the Internet Archive Wayback Machine (IAWM) found at http://www.archive.org/ to obtain much of the historical use of the photographs on the many pages of the Avnet website and its thirdparty users sites, and as attached to the Complaint. See, January 19, 2006 Twelfth Rule 26(A)(1) Disclosure Statement with a February 2, 2005 IAWM archive showing use of Plaintiff's photograph by Defendant Roy Vallee with an Internet Archive Wayback

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Machine search of "www.gcit.az.gov/members/Roy_Vallee.html."3 Plaintiff's search now for the same page yields that same page without Plaintiff's photograph, presumably because obviously the image appearing has since been blocked by the web site owner (i.e., Avnet).4 Avnet has similarly blocked searches of its historical website data using the Internet Archive Wayback Machine. Exhibit D hereto clearly shows "access to

http://www.avnet.com has been blocked by the site owner via robots.txt." (Emphasis added). The site also shows the text Avnet invoked to prevent access (by clicking the link shown that says, "See the site's robot.txt file", as well as instructions on how to prevent access). Therefore, by Avnet disclosing home webpage use and trying to

withdraw these admissions based on such 1) after discovery and depositions ended and 2) after Avnet has prevented independent verification of its older websites, Avnet itself has made it easy for Plaintiff to demonstrate "special difficulties in obtaining the evidence required to prove the matter admitted." Upchurch v. Ustnet, Inc., 160 F.R.D. 131, 133 (D. Oregon 1995). See also, Hadley v. United States, 45 F.3d 1345, 1348 (9th Cir. 1995). This is so because Avnet should not be the only source of information on the subject of when the photograph was used on the homepage and when it was not, but has made itself so. This is EXACTLY the circumstances "where Plaintiff will be unable to find the evidence required to prove the issue at trial (as described in Upchurch at 133)." Avnet has not even produced documents relevant to its 2002 and 2003 web pages; and has Avnet has never even produced or identified web pages Plaintiff attached to the Complaint.

A partial copy of Plaintiff's Twelfth Rule 26(A)(1) Disclosure Statement is attached as Exhibit B. Note, the date of January 19, 2006 in the top header and the web data "20050215" (February 15, 2005) in the web-footer. Not long after this 12th Disclosure, Plaintiff sent another Disclosure Statement showing use of his photograph by Defendant Roy Vallee on the www.gcit.az.gov/members/Roy_Vallee.html page through at least November 30, 2005. 4 See Exhibit C.
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Without the ability to independently web search and to depose all witnesses with knowledge of these facts, including additional deposition time of the very witness who verified both Avnet's Response to Plaintiff's Second Request for Admissions to Defendant Avnet, Inc. and Avnet's Second Supplemental Response to Plaintiff's First Set of Interrogatories, Defendant Allen Maag, who was deposed after the Response to Plaintiff's Second Request for Admissions to Defendant Avnet, Inc. and before the Second Supplemental Response to Plaintiff's First Set of Interrogatories, Plaintiff (the party who obtained the admission) hereby satisfies the Court that withdrawal or amendment will prejudice him in maintaining the action or defense on the merits. The withdrawal or amendment of Admissions 15 and 43 would be very prejudicial to Plaintiff and, therefore, pursuant to Rule 36, FED. R. CIV. P., must be denied.. Finally, in setting forth the test under Rule 36, Fed. R. Civ. P., Defendants conveniently ignored the case cited by Plaintiff, Victory Carriers, Inc. v. Stockton Stevedoring Co., 388 F.2d 955 (9th Cir. 1968). Perhaps more poignant is Defendant's failure to counter its holdings, whatsoever: An answer to an interrogatory is comparable to answers, which may be mistaken, given in deposition testimony or during the course of the trial itself. Answers to interrogatories must often be supplied before investigation is completed and can rest only upon knowledge which is available at the time. When there is conflict between answers supplied in response to interrogatories and answers obtained through other questioning, either in deposition or trial, the finder of fact must weigh all of the answers and resolve the conflict. On the other hand, if a party makes a crucial admission in his formal pleading, or in response to a formal request for admissions, then the admitted fact is to be taken as established... (emphasis added) (citations omitted). 388 F.2d at 959. Here, the interrogatory answers were not given at deposition or trial, therefore the holding of Victory Carriers does not favor Defendants position for the withdrawal or change to denial by the Court at this time, in view of these facts. Rather, Victory Carriers

specifically holds "On the other hand" for the premise of "if a party makes a crucial admission in his formal pleading, or in response to a formal request for admissions, then the admitted fact is to be taken as established...", so the Court should give this more
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weight, as this is exactly what Avnet did in its Response to Plaintiff's Third Request for Admissions to Defendant Avnet, Inc., where the instant admissions were made. Therefore, with the prejudice to Plaintiff from how license fees and usage may relate to actual damages (see Davis, discussed supra), and the Victory Carriers holding, Defendants' Motion to Withdraw Admissions should be denied in full. In the alternative, if the Court permits Avnet to withdraw admission nos. 15 or 43, the Court should award Plaintiff costs and attorneys fees for all of work and strategy relating to the prior admissions as well as responding to this motion. In addition, Plaintiff should then be allowed to re-depose everyone involved, including Defendant Allen Maag, who verified both the admissions in question and the new Interrogatory Answers, all at Defendants' expense, even though discovery has lapsed.

Respectfully submitted this 2nd day of May, 2006,

s/Jordan M. Meschkow Jordan M. Meschkow MESCHKOW & GRESHAM, P.L.C. 5727 North Seventh Street Suite 409 Phoenix, Arizona 85014 Telephone: (602) 274-6996 Facsimile (602) 274-6970 ATTORNEYS FOR PLAINTIFF

Nancy R. Giles GILES LEGAL, P.L.C. 733 West Willetta Street Phoenix, Arizona 85007 Telephone: (602) 252-1788 ATTORNEY FOR PLAINTIFF

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Case 2:04-cv-00621-SRB 8050-0131-196-1

CERTIFICATE OF SERVICE I hereby certify that on 2 May 2006 I electronically transmitted the attached document and its Exhibits to the Clerk's Office using the ECF System for filing and transmittal of a Notice of Electronic Filing to the following ECF registrants: Jordan Greene FENNEMORE CRAIG 3003 North Central Avenue, Suite 2600 Phoenix, Arizona 85012-2913 Attorneys for Defendants

s/Jordan M. Meschkow

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