Phillies v. Harrison/Erickson, Incorporated

Background

The court addressed discovery disputes left unresolved after an October 22, 2020 hearing. The opinion concerns The Phillies’ copyright-related claims involving the Phanatic and discovery requests exchanged with Harrison/Erickson.

Request to Contact the Copyright Office

Section 411(b)(2) of the Copyright Act requires a district court to ask the Register of Copyrights whether the Register would have refused a copyright registration if the Register had known that information in the application was inaccurate. Courts may first require a party to show that the application contained inaccurate information and that the registrant knowingly submitted it.

Harrison/Erickson asked the court to contact the Copyright Office about whether the Phanatic should have been described as an “artistic sculpture” and whether that description was consistent with Copyright Office practices. Harrison/Erickson nevertheless denied that the application contained inaccurate information. The Phillies believed the application was inaccurate because it described the Phanatic as an artistic sculpture rather than a costume, but proposed asking whether the copyright would have been registered if the Phanatic had been described as a costume.

The court concluded that the statutory conditions for contacting the Register had not been established. The parties disputed whether the registration information was inaccurate and whether any inaccuracy was knowingly submitted. The court also stated that whether the Phanatic was properly registered as an artistic sculpture was a disputed issue before the court and that asking the Copyright Office to assume inaccuracy would improperly invite it to address an issue reserved for the factfinder. The court denied without prejudice the request to seek the Copyright Office’s opinion about the materiality of inaccurate information.

Contention Interrogatories

The court explained that contention interrogatories are discovery questions used mainly to narrow and clarify disputed issues before summary judgment or trial. They are not generally intended to obtain every fact and piece of evidence a party may offer at trial. The court also recognized that asking one party for contentions on issues where the opposing party has the burden of proof can create a risk that a response will be mistaken for a concession.

Harrison/Erickson’s interrogatories to The Phillies

- Interrogatory No. 13: The Phillies’ response was acceptable, and Harrison/Erickson’s challenge was denied. - Interrogatory No. 15: To the extent the identified videos had not been produced, The Phillies was ordered to produce them. - Interrogatory No. 21: The Phillies’ objections were overruled. The Phillies was ordered to identify artwork, merchandise, photographs, and videos depicting the modified Phanatic design, called “P2,” that it contended it had the right to exploit after the Effective Termination Date. The Phillies did not have to catalog every fact or piece of evidence, but had to identify representative samples and provide meaningful disclosure to Harrison/Erickson.

The Phillies’ interrogatories to Harrison/Erickson

- Interrogatory No. 14: Harrison/Erickson’s response was acceptable, and The Phillies’ challenge was denied. - Interrogatories Nos. 15 and 16: Harrison/Erickson’s objections were overruled. It was ordered to answer whether it contended that the trademarks were invalid, not incontestable, or not famous. It did not have to describe in detail all factual bases for those contentions. - Interrogatory No. 17: Harrison/Erickson’s response was acceptable, and The Phillies’ challenge was denied. - Interrogatory No. 20: Harrison/Erickson’s response was acceptable, and The Phillies’ challenge was denied. - Interrogatories Nos. 21 and 22: Harrison/Erickson’s response was acceptable, and The Phillies’ challenge was denied. - Interrogatory No. 23: Harrison/Erickson’s objections were overruled. It was ordered to answer whether it contended that The Phillies had acquired substantial goodwill in the Phanatic over the past 42 years. It did not have to describe in detail the factual basis for that contention.

Disposition

The court denied without prejudice the request to seek the Copyright Office’s opinion on the materiality of inaccurate information. It ordered each party to supplement its responses to the disputed interrogatories, to the extent ordered in the opinion, within 14 days. The order was entered by Sarah Netburn, United States Magistrate Judge.