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B. Summary Judgment Cannot Be Considered Until Mishkoff Has Had the Opportunity to Pursue Discovery in Support of His Fair Use Defense; in the Alternative, the Evidence in the Record Raises Genuine Issues of Fact Material to the Fair Use Defense.

The second issue on which Mishkoff has been denied discovery is his defense of fair use. In this regard, the leading case in the Sixth Circuit is the en banc decision in Princeton University Press v. Michigan Document Service, 99 F.3d 1381 (6th Cir. 1996). There, the Court pointed to the four factors set forth in section 107 of the Copyright Act:

  1. the purpose and character of defendant's use, including its status as commercial or non-profit educational use;

  2. the nature of the copyrighted work (whether it is factual or creative);

  3. the fraction of the whole copyrighted work that was used; and

  4. the effect on the market for or value of the copyrighted work.

The Michigan Document court stressed that the last factor is the most important. Id. 1385

Mishkoff has sought discovery pertaining to each and every one of these four factors, but his requests have largely been met with stonewalling, and aside from the first factor, most of those responses are still in issue. With respect to the issue of commercial or non-commercial use, plaintiff has pointed to its briefs and discovery responses on the issue of commercial use on its three trademark claims. As the Court is aware, there are cross-motions for summary judgment pending on those claims, and the parties have disputed whether defendant is entitled to summary judgment on the ground that Mishkoff's use is non-commercial. To the extent that the issues are identical, plaintiff's inability to obtain summary judgment on that issue in the trademark context condemns its motion for summary judgment on this aspect of the fair use defense.

With respect to the second factor (the factual versus creative nature of the copyrighted work), there can be little question that the map of the mall is factual - it portrays the actual layout of the mall with the locations of the stores. Mishkoff believes that the drawing of the main court is also "factual" in the context of its purpose, which is, after all, to portray the intended appearance of the main court. The purpose of the drawing is to convey those facts rather than to show the artistic talent of the drafter. Although Taubman has argued in opposition to the motion to compel that the inclusion of human figures in the drawing show its essentially fictional or creative character, those figures are merely illustrative of the main, factual point of the drawing, which is to portray accurately the impressive overall appearance of the court. Defendant anticipates that the documents that he has sought from Taubman, showing the communications to recipients of the drawing and the communications among Taubman employees and between Taubman employees and JPRA and Associates, are likely to show their characterization of the drawing and of other drawings like it as essentially factual.

With respect to the third factor (the fraction of the work that has been copied), Mishkoff has sought extensive discovery to undercut any argument by Taubman that Mishkoff has copied the entire copyrighted work. Although Taubman has chosen to provide only the registration document for the two specific graphics that Mishkoff copied, Mishkoff is entitled to identify the entire copyrighted work of which those two graphics are a part, to determine whether he can argue that he copied only a fraction of the whole work, and, if so, how small a fraction. At this early stage of the case, Mishkoff cannot be sure what the "whole" is - that is to say, of within what entire body of work Mishkoff may wish to argue for the inclusion of the two graphics. Therefore, the discovery sought (a) the entirety of the works used to promote The Shops at Willow Bend, plus any other materials (even if not copyrighted) that were transmitted along with the copyrighted matter; (b) all other materials pertaining to The Shops at Willow Bend that have been copyrighted, and (c) the entirety of the works authored for Taubman by JPRA and Associates (the creators of the two graphics in question), including but not limited to the works authored specifically for The Shops at Willow Bend.

In this regard, the discovery requests are not limited to items that Taubman has registered. Mishkoff will argue that a copyright owner cannot manipulate the fair use test by waiting until after its works have been copied and then registering only the copied works. Moreover, as Taubman has repeatedly reminded the Court in the context of other motions, the copyright comes into existence when the work is created, and not simply when it is registered; and the third fair use factor is based on the portion of the copyrighted work that is used, not just the portion of the registered work that is used.

[Note: Even without the discovery that Mishkoff needs, he can say for certain that the copied graphics are part of two larger works, the official taubman.com web site and the official theshopsatwillowbend.com web site, all of which now bear copyright notices identifying Taubman as the owner. Mishkoff Rule 56(f) Affidavit, ¶ 7. On that ground alone, there is a genuine issue about whether this factor of the fair use test favors Mishkoff, warranting a denial of summary judgment.]

In opposing discovery, Taubman drew the following analogy: Suppose, says Taubman, that Mishkoff copied an entire book written by J.D. Salinger; he could not claim fair use by arguing that he did not copy other books also written by Salinger. The analogy is a false one, however, because Mishkoff is seeking only related work by JPRA and Associates for Taubman, which is not comparable to asking for a completely different book. But the analogy can be revised to present a situation that is comparable to this case. Thus, suppose that Mishkoff reprinted material from two separate pages of a Salinger book in a book review, or that he placed two excerpts from the book on his web page in the course of telling Internet users what a wonderful book Salinger had written, and urging them to read the book for themselves. If he copied only two short excerpts of the book, the fact that it was just a small part of the book would be a strong argument in favor of his fair use defense. Suppose, however, that Salinger had not registered any copyright in his book until after the book review had been published, at which point he deliberately registered his copyright only in the two excerpts that had been copied - would the reviewer's fair use defense fail on the ground that he had copied "the entire copyrighted work"? The answer is, no: the reviewer would be entitled to compare the small amount copied to the entire work.

Similarly, here, Mishkoff is seeking discovery to identify the "entire copyrighted work," precisely for the purpose of preventing the plaintiff from manipulating this factor of the test for fair use by selecting only the copied portions for after-the-fact registration. Taubman's objections to interrogatories imply that JPRA and Associates has authored a large quantity of material to promote Taubman's malls, including The Shops at Willow Bend. Mishkoff wants to identify the entire work to advance his fair use defense. Plaintiff's argument that the two graphics constitute an "entire copyrighted work" implies that there is no effective distinction between copying two graphics from a website and copying the entire website, in that both could be characterized as copying the "entire" work. This convoluted definition of the "entire copyrighted work" makes a mockery of the concept of fair use. Summary judgment should not be considered until Mishkoff has had the opportunity to conduct that discovery.

The final factor of the test for fair use is the impact of the use on "the market for or the value of" the copyrighted work. The Supreme Court and the en banc Sixth Circuit have both described the fourth factor as by far the most important aspect of the test for fair use. Harper & Row Pub. v. Nation Enterprises, 471 U.S. 539, 566 (1985); Michigan Document, 99 F.3d at 1385. Several interrogatories and document requests attacked the fourth factor directly, asking Taubman to explain what the market for the works in question is and to provide the evidentiary basis for that position, and asking for the evidentiary basis of any impact that Taubman contends Mishkoff's copying has had on the market for or the value of the work in question. These discovery requests are of central relevance to the test for fair use. Other discovery requests are addressed to this issue indirectly, by seeking to find out how Taubman has used these graphics, the larger work of which they are a part, and other similar works.

Taubman's current assertion, in amended responses to Interrogatories Nos. 9, 10, and 11 that now include the statement "plaintiff does not know" what the market for or value of the work is, should be sufficient to deny summary judgment on the copyright claim. But, without establishing the market for or value of the work, plaintiff cannot show that there are no genuine issues concerning Mishkoff's assertion that his use of the graphics did not have an adverse impact on the market for or value of the work, or, at most, that his use had a minimal impact. The Court should either deny summary judgment outright based on Taubman's refusal to describe the market for or value of the work, or postpone a decision on summary judgment until Mishkoff has obtained discovery on that issue.

[Note: In its briefs on the discovery issue, Taubman has avoided that question to some degree, by stating that it does not know "the dollar value" of the graphics; the question is not the dollar amount of the market value, but what the market is, or what any other "value" the graphics have, and what impact Mishkoff's use had on that market or that value.]

Moreover, Mishkoff has posed other interrogatories and document requests seeking evidence that bears indirectly on the issue of the "market for" or "value of" the work. Mishkoff believes that Taubman made extensive efforts to publicize The Shops at Willow Bend, and that it used the works that Mishkoff copied, and used similar works, for that purpose. Mishkoff further believes that Taubman urged recipients of these materials to make copies of the works that it was disseminating, including the works in question, and indeed to publish them further. (Some evidence supporting this contention is discussed infra at page 14). If the discovery that Mishkoff seeks proves that Taubman was in fact encouraging copying to promote its mall, Mishkoff will argue that his use of the works in question was consistent with the purposes for which Taubman made its publicity efforts, thus undercutting any claim that Mishkoff's use detracted from either the market for the works or the value of the works. Such evidence would strongly support Mishkoff's fair use claims in this case. The evidence sought would also tend to identify the persons who were responsible for and involved in the marketing program, thus identifying potential deponents.

Taubman asserted in response to the motion to compel discovery, Opposition at page 3 point 6, that plaintiff's use of the works is irrelevant to the case. This argument, however, is inconsistent with the judicial analysis of the fourth factor, which focuses attention on the impact defendant's use had on the plaintiff's intended uses of the work. The finder of fact will not be able to make that determination until it knows what plaintiff's intended use was. Mishkoff is entitled to have plaintiff explain what its intended uses were, and he is also entitled to have plaintiff identify the persons who know its intended uses so that he can take their depositions. Summary judgment should not be granted until complete responses have been provided and Mishkoff has had the opportunity to explore the issue by examining documents and taking depositions.

A number of courts have analyzed the plaintiff's use as well as the defendant's and then relied on a practical analysis of the positive effects that the defendant's use may have on the plaintiff's use as supporting the defense of fair use. E.g., NRA v. Handgun Control, 15 F.3d 559, 562 (6th Cir. 1994); Hustler Magazine v. Moral Majority, 606 F. Supp. 1526, 1539 (C.D. Cal. 1985). Both of these cases are particularly instructive because they involved plaintiffs who were attempting to use the copyright laws as a basis for suing groups to which the plaintiffs were otherwise hostile, seizing on the groups' use of a copyrighted document and claiming harms which, upon examination, were illusory. So, here, Mishkoff intends to argue that at least one major purpose for the graphics was to increase public interest in Taubman's mall, and that his use of the graphics on a web site that praised the mall was consistent with that purpose. To build that case, Mishkoff is entitled to examine documents showing how plaintiff used the graphics, and what its staff members said to each other and to outsiders about the graphics.

Although Taubman's opposition contains an unsworn factual assertion that "there was no invitation to copy the[] works," point 6 on page 3, the investigation that counsel has been able to conduct suggests otherwise. For example, the official Taubman web page at www.taubman.com contained a page that urged viewers to "download" a document containing one of the graphics at issue in this case, specifically, the portrayal of the main court of the mall. Mishkoff Rule 56(f) Affidavit, ¶ 5 and Exhibit 1. Moreover, a version of that drawing has been published elsewhere, and the publisher has indicated that, although it did not retain records showing its source for the image, it believed or assumed that the image was provided to the publisher in a Taubman press kit. Id. and Exhibit 2. Obviously, if Taubman disseminated press kits urging that the graphics be published to help it tell viewers of those publications about the mall, that would support Mishkoff's argument that his use of the graphics was entirely consistent with their intended use. Such press kits, assuming they existed, would be among the documents described by Mishkoff's discovery requests.

Pointing to an excerpt from Mishkoff's deposition, Taubman argues that it never granted permission for the copying of the works and that Mishkoff knew that it had not done so. The deposition testimony is not as clear as Taubman would have it. In context, Mishkoff was simply acknowledging that it would have been wiser to have obtained specific permission to place these two graphics on his own web site, "which I did not do on the assumption that you would not mind... ." Deposition Tr., quoted Summary Judgment Mem. at 2-3. Taubman will be entitled to present this evidence to the finder of fact in arguing that it never gave permission to copy. The communication from the Shopping Centers Today suggests that contrary evidence exists, and Mishkoff is entitled to pursue discovery to obtain it. The motion for summary judgment should not be considered until that discovery has been completed.

Next: Summary Judgment Should Be Denied...

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