Fraserside IP L.L.C. v. Youngtek Solutions Ltd.

• Decision Date: 16 July 2012
• Docket Number: No. C11-3005-MWB,C11-3005-MWB
• Parties: FRASERSIDE IP L.L.C., an Iowa Limited Liability Company, Plaintiff, v. YOUNGTEK SOLUTIONS LIMITED, dba EmpFlix, dba www.empflix.com, dba TNAFlix.com and www.tnaflix.com, and John Does 1-100 and John Doe Companies 1-100, Defendants.
• Court: U.S. District Court — Northern District of Iowa

FRASERSIDE IP L.L.C., an Iowa Limited Liability Company, Plaintiff,

v. YOUNGTEK SOLUTIONS LIMITED, dba EmpFlix, dba www.empflix.com, dba TNAFlix.comand www.tnaflix.com, and John Does 1-100 and John Doe Companies 1-100, Defendants.

No. C11-3005-MWB

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF IOWA CENTRAL DIVISION

Dated: July 16, 2012

ORDER REGARDING PLAINTIFF'S RULE 56 MOTION TO DEFER

CONSIDERATION OF MOTION FOR SUMMARY JUDGMENT

AND MOTION TO ALLOW ADDITIONAL DISCOVERY

TABLE OF CONTENTS

I. INTRODUCTION AND BACKGROUND..........................2

II. LEGAL ANALYSIS ....................................... 4

A. Requirements For A Rule 56(d) Continuance .................. 4

B. Fraserside's Submission ................................ 7

C. Adequacy of Fraserside's Submission ....................... 9

III. CONCLUSION ........................................ 16

In this lawsuit, the plaintiff asserts claims under a variety of copyright and trademark theories against defendants arising from defendants alleged infringement of plaintiff's copyrighted adult movies and trademarks for those movies through internet websites defendants operate. The questions before me do not involve the merits of plaintiff's claims, but what a party must do to obtain a continuance to pursue additional discovery before a court rules on a pending motion for summary judgment and whether plaintiff has done it in this case.

I. INTRODUCTION AND BACKGROUND

On February 17, 2011, plaintiff Fraserside IP L.L.C. ("Fraserside") filed a complaint against defendants Youngtek Solutions Limited, John Does, and John Doe Companies, alleging the following causes of action: copyright infringement, in violation of 17 U.S.C. §§ 106 and 501 et seq.; contributory copyright infringement, in violation of 17 U.S.C. §§ 106 and 501 et seq.; vicarious copyright infringement, in violation of 17 U.S.C. §§ 106 and 501 et seq.; inducing copyright infringement, in violation of 17 U.S.C. §§ 106 and 501 et seq.; trademark infringement, in violation of 15 U.S.C. § 1114; contributory trademark infringement, in violation of 15 U.S.C. § 1114; vicarious trademark infringement, in violation of 15 U.S.C. § 1114; false designation of origin, in violation of 15 U.S.C. § 1125(a); and, dilution of trademark, in violation of 15 U.S.C. § 1125(c). Youngtek moved to dismiss the complaint, arguing that it is not subject to personal jurisdiction in Iowa and the Complaint must be dismissed pursuant to Federal Rule of Civil Procedure 12(b)(2). On December 2, 2011, because resolution of Youngtek's motion would require me to consider matters outside the complaint, I ordered Youngtek's Motion to Dismiss be refiled as a motion for summary judgment by December30, 2011. On December 19, 2011, Youngtek sought leave to take discovery concerning ownership of the intellectual property at issue and requested modification of the briefing schedule. On December 20, 2011, then Chief United States Magistrate Judge Paul A. Zoss ordered that the parties should complete their discovery by the deadline set in the scheduling order, April 16, 2012, and then file any summary judgment motions.

On April 19, 2012, Youngtek filed its Motion for Summary Judgment, arguing that it is not subject to personal jurisdiction in Iowa. On April 25, 2012, Fraserside filed its Rule 56 Motion to Defer Consideration of Motion for Summary Judgment and Motion to Allow Additional Discovery (docket no. 48). In its motion, Fraserside requests that it be permitted to take additional discovery, pursuant to Federal Rule of Civil Procedure 56(d), before having to respond to Youngtek's Motion for Summary Judgment. Specifically, Fraserside seeks to depose eight individuals, and conduct discovery from Fraserside's hosting companies and Google Analytics concerning the number of Iowa visitors or subscribers to Youngtek's websites. Fraserside argues that such discovery is necessary because Youngtek has provided incomplete and evasive and possibly untrue responses to its discovery requests. Fraserside requests 50 days in which to conduct this discovery and 15 days after that in which to file its resistance to Youngtek's Motion for Summary Judgment. On May 10, 2012, Youngtek resisted Fraserside's Rule 56(d) motion. Youngtek argues that Fraserside has failed to explain why it did not previously pursue the discovery it now seeks. Youngtek also argues that Fraserside has not explained how postponement of a ruling on Youngtek's Motion for Summary Judgment will enable Fraserside to rebut the movant's showing of the absence of a genuine issue of fact. On May 18, 2012, Fraserside filed a reply brief in support of its Rule 56(d) motion.

II. LEGAL ANALYSIS

A. Requirements For A Rule 56(d) Continuance

Rule 56(d) provides as follows:

(d) When Facts Are Unavailable to the Nonmovant. If a nonmovant shows by affidavit or declaration that, for specified reasons, it cannot present facts essential to justify its opposition, the court may:

(1) defer considering the motion or deny it;

(2) allow time to obtain affidavits or declarations or to take discovery; or

(3) issue any other appropriate order.

FED. R. CIV. P. 56(d).¹

The Eighth Circuit Court of Appeals has explained that:

To obtain a Rule 56[(d)] continuance, the party opposing summary judgment must file an affidavit "affirmatively demonstrating . . . how postponement of a ruling on the motion will enable him, by discovery or other means, to rebut the movant's showing of the absence of a genuine issue of fact."

Ray v. American Airlines, Inc., 609 F.3d 917, (8th Cir. 2010) (quoting Humphreys v. Roche Biomedical Lab., Inc., 990 F.2d 1078, 1081 (8th Cir. 1993)); see Ballard v. Heineman, 548 F.3d 1132, 1136-37 (8th Cir. 2008) ("Unless a party files an affidavit under Federal Rule of Civil Procedure 56(f) showing what facts further discovery may uncover, 'a district court generally does not abuse its discretion in granting summary judgment on the basis of the record before it.'") (quoting Nolan v. Thompson, 521 F.3d 983, 986 (8th Cir. 2008)); Roark v. City of Hazen, Ark., 189 F.3d 758, 762 (8th Cir. 1999) ("When seeking a continuance, however, the party opposing summary judgment is required to file an affidavit with the district court showing what specific facts further discovery might uncover."); Stanback v. Best Diversified Prods., Inc., 180 F.3d 903, 911 (8th Cir. 1999) ("Federal Rule of Civil Procedure 56(f) . . . requires the filing of an affidavit with the trial court showing 'what specific facts further discovery might unveil.'") (quoting Dulany, 132 F.3d at 1238).

Thus, the opposing party must "demonstrate how discovery will provide rebuttal to the movant's claims." Alexander v. Pathfinder, Inc., 189 F.3d 735, 744 (8th Cir. 1999). Fraserside, as the party seeking a Rule 56(d) continuance, must do more than simply assert that he may discover additional facts, and must do more even than speculate about what those facts might be. Rather, as I explained in Dethmers Mfg. Co. v. Automatic Equip. Mfg. Co., 70 F. Supp. 2d 944 (N.D. Iowa 1999), "'[i]n moving for relief under Rule 56(f), a party must demonstrate specifically "how postponement of a ruling on the motion will enable him, by discovery or other means, to rebut the movant's showing of the absence of a genuine issue of fact.'"" Dethmers Mfg. Co., 70 F. Supp. 2d at 981 (quoting Simmons Oil Corp. v. Tesoro Petroleum Corp., 86 F.3d 1138, 1144 (Fed.Cir. 1996), in turn quoting Willmar Poultry Co. v. Morton-Norwich Prods., Inc., 520 F.2d 289, 297 (8th Cir. 1975), cert. denied, 424 U.S. 915 (1976)). To that end,

[t]he party "may not simply rely on vague assertions that additional discovery will produce needed, but unspecified, facts." Securities & Exchange Comm'n v. Spence & Green Chem. Co., 612 F.2d 896, 901 (5th Cir. 1980), cert. denied, 449 U.S. 1082, 101 S. Ct. 866, 66 L. Ed. 2d 806 (1981). The rule does not require clairvoyance on the part of the moving party, Enplanar, Inc. v. Marsh, 11 F.3d 1284, 1292 (5th Cir.), cert. denied, 513 U.S. 926, 115 S. Ct. 312, 130 L. Ed. 2d 275 (1994), but the movant is "required to state with some precision the materials he hope[s] to obtain with further discovery, and exactly how he expect[s] those materials would help him in opposing summary judgment." Krim v. BancTexas Group, Inc., 989 F.2d 1435, 1443 (5th Cir. 1993). It is not enough simply to assert, a la [the non-movant in the case], that "something will turn up."

Simmons Oil Corp., 86 F.3d at 1144.

The reason underlying such requirements is that "it is well settled that ' Rule 56[(d)] does not condone a fishing expedition' where a plaintiff merely hopes to uncover some possible evidence of [unlawful conduct]." Duffy v. Wolle, 123 F.3d 1026, 1041 (8th Cir. 1997). This is because "'Rule 56[(d)] is not a shield that can be raised to block a motion for summary judgment without even the slightest showing by the opposing party that his opposition is meritorious.'" Id. (quoting United States v. Light, 766 F.2d 394, 397 (8th Cir. 1985)). Therefore, "'[a] party invoking its protections must do so in good faith by affirmatively demonstrating why he cannot respond to a movant's affidavits as otherwise required by Rule 56(e) and how postponement of a ruling on the motion will enable him, by discovery or other means, to rebut the movant's showing of the absence of a genuine issue of fact.'" Duffy, 123 F.3d at 141 (again quoting Light, 766 F.2d at 397); seeElnashar v. Speedway SuperAmerica, L.L.C., 484 F.3d 1046, 1054 (8th Cir. 2007); Robinson v. Terex Corp, 439 F.3d 465, 467 (8th Cir. 2006). A court does not abuse its discretion denying discovery before ruling on a motion for summary judgment if the facts sought to be obtained by such a continuance would not prevent the entry of summary judgment. See Duffy, 123 F.3d at 141; Allen v. Bridgestone/Firestone, Inc., 81 F.3d 793, 797-98 (8th Cir. 1996). Moreover, Rule 56(f) is not devised to provide relief to those who sleep upon their rights. See ...