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Samad Brothers, Inc v. Bokara Rug Co.

September 19, 2011


The opinion of the court was delivered by: John F. Keenan, United States District Judge:

Opinion and Order

Before the Court is Bokara Rug Co., Inc. ("Bokara"), Jan Soleimani, and Gabriel Vaknin's (collectively "Defendants") objection to Magistrate Judge Fox's order directing Defendants to produce 304 copyright registration photographs. In addition, Samad Brothers, Inc. ("Samad Brothers" or "Plaintiff") moves for sanctions and contempt against Defendants for failing to produce these photographs. For the reasons that follow, Defendants' objection is overruled and the Magistrate Judge's order is affirmed. Plaintiff's motion for sanctions and contempt is denied.


Familiarity with the facts and procedural history of this case is presumed. Briefly, Samad Brothers is in the business of importing and selling rugs. (Third Am. Compl. ¶ 5). Samad Brothers alleges that Defendants have infringed twenty-five copyrighted rug designs which were created by S.N. Kapoor Exports and Jain Carpets and subsequently assigned to Samad Brothers. (Id. ¶¶ 16-18).

As this lawsuit involves copyrighted rug designs, documents alone may not establish whether Bokara has imported or sold infringing rugs. A visual inspection of Bokara's inventory proved necessary in order to determine whether rugs with different identifying names or numbers nonetheless bear the same design as Samad Brothers' rugs. Thus, Samad Brothers has repeatedly sought photographs of Bokara's rugs throughout discovery; of particular relevance to the instant dispute, Samad Brothers requested that Bokara produce copies of all 304 of its copyright registrations as each registration includes a deposit copy image of the copyrighted design. A subsequent request for documents specifically focused on copyright registrations for two Bokara rug designs designated "JB7" and "Magnolia P" that Samad Brothers independently identified as being substantially similar to its own copyrighted designs.

On November 15, 2010, Defendants objected to Plaintiff's requests for the JB7 and Magnolia P registrations as vague, overbroad, unduly burdensome, and irrelevant. (Declaration of Mark S. Kaufman ("Kaufman Decl."), Ex. D-8 at 8). Defendant simultaneously certified, in accordance with the Magistrate Judge's direction, that it had conducted a diligent and reasonable search for all documents in its custody or control responsive to Plaintiff's requests. (Kaufman Decl., Ex. F).

On November 16, 2010, the Magistrate Judge held a conference to address numerous discovery disputes between the parties, including the dispute regarding production of copyright registrations. Initially, the Magistrate Judge noted: "The request . . . as I read it, was for all copyright registrations. I see no reason for the defendant to provide all copyright registrations that they have. You [Plaintiff] have focused in the writing on, now two that you say are linked to designs involved in this action. That's very different from asking for all registrations." (Declaration of Jura Zibas ("Zibas Decl."), Ex. 3, Nov. 16, 2010 Tr. at 6). The Magistrate Judge then went on to referee the dispute with respect to those two specific copyright registrations. Caught in the middle of a he said-she said argument, the Magistrate Judge accepted Defendants' certification that they had provided all discovery. (Kaufman Decl., Ex. D-7, Nov. 16, 2010 Tr. at 21-22 ("I can't go to the defendant's inventory and document and determine for myself that everything has been given over or has not. I think we're at the point where the defendant's representation that it has given over everything stands.")).

On November 18, 2010, three days after certifying that their production was complete and two days after the conference with the Magistrate Judge, Defendants produced to Plaintiff the previously withheld copyright registration photograph for the JB7 design. Suspecting that Defendants had not conducted as thorough a review of their documents as represented, Samad Brothers deposed Mr. Soleimani and Mr. Vaknin, the two individual defendants, and Mr. Lew, their assistant, about their efforts to search for photographs of Bokara's rugs. Mr. Soleimani and Mr. Vaknin each testified that they did not look for photographs, but instructed Mr. Lew to do so. (Kaufman Decl., Ex. D-4, Soleimani Depo. Tr. at 72-74; Kaufman Decl., Ex. G-B, Vaknin Depo. Tr. at 238-41). However, when asked, "Did you look for photographs among the deposit copies of the copyright [registrations] filed by Bokara?" Mr. Lew responded in the negative. (Kaufman Decl., Ex. G-A, Lew Depo. Tr. at 261).

In a letter dated December 3, 2010, Plaintiff informed the Magistrate Judge of its belief that Defendants' response to discovery requests was incomplete because Bokara employees did not review the company's 304 copyright registrations -- a "key source" of potentially responsive photographs. (Kaufman Decl., Ex. D). On January 24, 2011, the Magistrate Judge held another conference to address the discovery disputes renewed by Plaintiff's letter. He ruled:

I want to turn first to . . . the plaintiff's December 3, 2010 letter.. . .

Turning to the discovery matters that the plaintiff claims are really evidence of deficiencies in the responses made to the plaintiff discovery demands it does not appear to me that there was a search, certainly not an adequate search, for photographs generally. And specifically, photographs that are part of the registrations for rug designs. And I think that the defendants have to do such a search and produce whatever photographs they have generally, and specifically, the photographs that are attached to the registrations.

The testimony by defendants' representatives really amounts to a finger-pointing exercise, each claiming either he doesn't have responsibility to look for any photographs, or any other documents, or believes somebody else was doing it on behalf of the defendants.

Let me turn to one of the registrations that was disclosed, JB7, after there was a certification that the defendants had made a complete disclosure or production of materials to the plaintiff. How is it that that registration came to be uncovered and surrendered in the face of a certification that that production was complete? (Kaufman Decl., Ex. A, Jan. 24, 2011 Tr. at 3-5).

After the January 24, 2011 conference concluded, Plaintiff's counsel sent a letter to defense counsel summarizing his understanding of the Magistrate Judge's directives. At the top of the list, counsel wrote: "It does not appear that defendants searched for photos generally or for photos that were part of copyright registrations. Defendants must engage in a search for photographs, and, at a minimum, shall produce deposit copies of all of Bokara's copyright registrations." (Kaufman Decl., Ex. H). In a letter dated February 1, 2011, Defendants informed the Magistrate Judge again that they believed they had previously satisfied Plaintiff's request for photographs related to designs in the lawsuit. (Zibas Decl., Ex. 6). Then, on February 7, 2011, Defendants sent another letter to the Magistrate Judge requesting "clarification" of the Judge's January 24, 2011 ruling regarding production of copyright registration photographs -- namely, Defendants requested that ...

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