Opinion
No. 03 Civ. 969 (CSH).
May 12, 2006
MEMORANDUM OPINION AND ORDER
In anticipation of trial, Plaintiffs Gary Price Studios, Inc. and Gary Lee Price (collectively "Gary Price" or "Plaintiffs") make a motion in limine with respect to four proposed exhibits of Defendants Randolph Rose Collection, Inc., Randolph Rose, Ellen Rose, Jordan Rose, Far Eastern Antiques Arts, Inc., and Stephen Gano (collectively "Randolph Rose" or "Defendants"). The proposed exhibits, Exhibits I, J, K, and L (collectively, the "Opposed Exhibits"), are described in Defendants' List of Witnesses and Exhibits dated January 23, 2006.
This is a case of alleged infringement of four copyrighted sculptures. The factual background is stated in the Court's prior opinion, reported at 2005 WL 1924733 (S.D.N.Y. Aug. 9, 2005), familiarity with which is assumed.
The Opposed Exhibits each consist of a "[c]ompilation of bronze statues," publicly available for purchase, depicting subjects similar to those of the allegedly infringed works at issue in this case. Defendants List of Witnesses and Exhibits. Thus there are compilations of a boy flying a kite, a boy reading a book next to a stack of books, a circle of children holding hands, or a boy doing either a handstand or a cartwheel. Id.
Plaintiffs contend that Defendants should have identified these documents as part of their Rule 26(a)(1), Fed.R.Civ.P. Initial Disclosures, served upon Plaintiffs on March 1, 2004. Plaintiffs' Memorandum of Law in Support of Plaintiffs' Objection and Motion in Limine ¶ 3. Furthermore, Plaintiffs argue, Defendants should have produced the Opposed Exhibits pursuant to Rule 34, Fed.R.Civ.P. in response to Plaintiffs' Rule 34 request that Defendants "[p]roduce every document concerning any claim and/or defense asserted in this case." Id. ¶ 4. Defendants' counsel certified on November 1, 2005 that all prior disclosures were complete. Lehrer Letter, November 1, 2005. Id. ¶ 7. Defendants did not produce or identify the Opposed Exhibits at any time prior to the filing of Defendants' List of Witnesses and Exhibits on January 23, 2005. Id. ¶ 8. Plaintiffs move for the preclusion of the Opposed Exhibits pursuant to Rule 37(c)(1), Fed.R.Civ.P.
Plaintiffs' contention is that Defendants violated Rules 26(a)(1) and 34 by failing to disclose the Opposed Exhibits. Rule 26(a)(1) governs initial disclosures, but also places a continuing obligation on the parties to disclose the identities of individuals and copies or descriptions of documents that they may use to support their claims or defenses. Specifically, Rule 26(a)(1)(B) requires a party to provide "a copy of, or a description by category and location of, all documents, data compilations, and tangible things that are in the possession, custody or control of the party and that the disclosing party may use to support its claims or defenses, unless solely for impeachment." Rule 34 obligates all parties to respond to discovery requests for any documents and tangible things "which constitute or contain matters within the scope of Rule 26(b) and which are in the possession, custody or control of the party upon whom the request is served."
Defendants maintain they were not obligated to disclose the Opposed Exhibits during discovery. Both Rules 26(a) and 34 obligate a party to disclose only such documents and things as are in a party's "possession, custody or control." Because the documents included in the Opposed Exhibits constitute copies of third party web pages showing "advertisements of bronze statutes being offered for sale by third parties," Defendants argue that these pages are not in their "possession, custody or control" and therefore fall outside the scope of their discovery obligations.
There is force to this contention. The limiting phrase "possession, custody and control" was included by the drafters of the Rules before the advent of the Internet and websites, and it is questionable whether the drafters would have regarded material available to the public through these electronic marvels as within the "possession, custody and control" of a particular party. However, I need not decide that question because, assuming without deciding that Defendants were obligated to disclose the information contained in the Opposed Exhibits under Rules 26(a) and 34, under Rule 37(c)(1) any failure to disclose the Exhibits is harmless. Where a party fails to disclose discovery information without substantial justification, Rule 37(c)(1) prevents the party from using that evidence at trial, unless the failure to disclose is harmless. Courts consider several factors in determining whether a discovery violation mandates preclusion of the evidence at trial: "(1) the party's explanation for failure to comply with the discovery order; (2) the importance of the testimony of the precluded [evidence]; (3) the prejudice suffered by the opposing party as a result of having to prepare to meet the new testimony; and (4) the possibility of a continuance." Design Strategies, Inc. V. Davis, 228 F.R.D. 210 (S.D.N.Y. 2005) (quoting Empresa Cubana Del Tabaco v. Culbro Corp., 213 F.R.D. 151, 159 (S.D.N.Y. 2003).
"The burden to prove substantial justification or harmlessness rests with the party who has failed to disclose information pursuant to Rule 26." Wright v. Aargo Security Services, Inc., 2001 WL 1035139, 99 CIV. 9115 (S.D.N.Y. Sept. 7, 2001). Defendants do not provide any justification for their failure to disclose information, since they believe they were never obligated to produce the information in question. Nevertheless, even if Defendants were not justified in that belief, preclusion is not appropriate because Plaintiffs were not harmed by Defendants' delay. "A violation of the Rule is harmless when there is no prejudice to the party entitled to the disclosure." Lesser v. Wildwood, No. 01 Civ. 4209, 2003 WL 22228757 (S.D.N.Y. Sept. 29, 2003) ( quoting American Stock Exchange, LLC v. Mopex, Inc., 215 F.R.D. 87, 93 (S.D.N.Y. 2002) (internal citations omitted).
Even if Defendants were obligated to produce these documents during the formal discovery period, the List of Witnesses and Exhibits was submitted on January 23, 2006, nearly four months before the trial is scheduled to begin on May 22, 2006. That list included a generalized description of the sort of documents of which the Opposed Exhibits are exemplars. For example, the list recited: "Compilation of bronze statues of a boy flying a kite, which are publicly available for purchase." Similar references are made to the other three types of sculptures in suit. Plaintiffs attempt to address the question of harm in their Reply Memorandum at 3-4. But rather than pointing to any specific prejudice that might ensue as a result of Defendants' failure to produce the Opposed Exhibits, Plaintiffs make the general argument that "[h]ad Defendants timely produced the documents, a proper investigation into the authenticity, relevance, foundation and reliability of the compilations or information contained in the compilations could have been undertaken" Id. But I am not persuaded that the four-month period between Defendants' listing of generalized descriptions of the Opposed Exhibits and the trial date did not give Plaintiffs sufficient time to conduct their own Internet investigations or ask Defendants to clarify the references.
Plaintiffs further argue that the existence of other infringers "is irrelevant" to the case at bar. This is an interesting question that implicates F.R.Evid. 401, which provides: "`Relevant evidence' means evidence having any tendency to make the existence of any fact that is of consequence to the determination of the action more probable or less probable than it would be without the evidence." But I do not undertake to decide that question now. Counsel will argue the point on the morning of the day the case is called for trial and the Court will decide it before counsel make their opening statements to the jury. However, Plaintiffs' arguments on this motion are not persuasive because they have not shown they have been harmed by Defendants' delay in identifying these documents. Therefore, even if Defendants were obligated by the Rules to identify them earlier, a doubtful proposition, Rule 37(c)(1) does not preclude the Opposed Exhibits.
For the foregoing reasons, plaintiffs motion in limine is denied.
It is SO ORDERED.