United States District Court, D. Connecticut
RULING ON DEFENDANTS' MOTION TO DEFER
CONSIDERATION OF PLAINTIFF'S MOTION FOR PARTIAL SUMMARY
JUDGMENT AND TO COMPEL PRODUCTION OF DOCUMENTS, DEPOSITIONS,
AND SUPPLEMENTAL INTERROGATORY RESPONSES
CHARLES S. HAIGHT, JR. SENIOR UNITED STATES DISTRICT JUDGE
Best-Lock Construction Toys, Inc. and Best-Lock Limited
(collectively "Best-Lock") have filed a motion
[Doc. 150] to defer consideration of the pending motion of
Plaintiffs Lego A/S and Lego Systems, Inc. (collectively
"Lego") for partial summary judgment.
motion to defer consideration is Best-Lock's renewed
effort to persuade the Court that additional discovery is
essential to enable Best-Lock to oppose Lego's partial
summary judgment motion. Best-Lock anticipates that the
additional discovery it has in mind will create genuine
issues of material fact with respect to Lego's motion.
Lego opposes Best-Lock's motion to defer, and contends
that the Court should adjudicate Lego's partial summary
judgment motion on the present record. The motion has been
elaborately briefed, the Court heard oral argument, and the
question is ripe for decision. This Ruling resolves
October 14, 2011, Lego initiated this action, alleging
infringement of two copyrights filed in 1994, VA 655-104 and
VA 655-230 (the "Minifigure Copyrights"). The
Complaint, as amended on August 30, 2012, alleges that
Best-Lock infringed the Minifigure Copyrights through its
actions producing and selling similar minifigures in the
United States. Specifically, Lego asserts claims for (1)
infringement of the Minifigure Copyrights under 17 U.S.C.
§ 101, et seq.; (2) defamation; and (3)
violation of the Connecticut Unfair Trade Practices Act
("CUPTA"), Conn. Gen. Stat. § 42-110a, et
seq. See Second Amended Complaint. [Doc. 84]. Lego seeks
to enjoin and restrain Best-Lock from manufacturing or
selling its minifigures, and asserts claims for actual
damages. See Id. at 10-11.
has asserted affirmative defenses and Counterclaims,
claiming, inter alia, that: (1) the Minifigure
Copyrights are invalid and unenforceable; (2) Best-Lock is
entitled to a declaratory judgment that the sale of
Best-Lock's minifigures does not infringe on the
Minifigure Copyrights; and (3) Best-Lock is entitled to an
injunction requiring Lego to consent to the importation and
delivery of Best-Lock's goods in the United States.
See Best-Lock's Answer. [Doc. 86]. Best-Lock
also added Best-Lock Group Limited as a Counterclaim
Plaintiff. See Id. ¶ 87.
is assumed with the Court's prior decisions in this
matter, reported at: 874 F.Supp.2d 75 (ruling on the
parties' cross-motions for preliminary injunctions); 886
F.Supp.2d 65 (ruling on Plaintiffs' motion to amend its
complaint); 2012 WL 6156129 (ruling on the parties'
request for a protective order); 2013 WL 1611462 (ruling on
the motion for reconsideration of the ruling on the
protective order); and 319 F.R.D. 440 (ruling on
Defendants' motion to dismiss and on Plaintiffs'
motion for reconsideration of the Court's Order staying
its motion for partial summary judgment).
here, a time came when Best-Lock filed a Motion to Dismiss
for Lack of Prosecution. [Doc. 128]. On April 13, 2016, Lego
filed a Motion for Partial Summary Judgment as to liability
for its infringement claims under Count One of its Second
Amended Complaint, as well as on several of Best-Lock's
affirmative defenses and Counterclaims. [Docs. 130].
Best-Lock then filed an Emergency Motion to Deny, Dismiss or
Stay Lego's Motion for Partial Summary Judgment [Doc.
135], arguing that Lego's Motion for Partial Summary
Judgment should be denied or stayed in light of the fact that
Best-Lock's Motion to Dismiss was pending, and discovery
Court initially granted Best-Lock's Emergency Motion,
denying Lego's Motion for Summary Judgment without
prejudice to refiling once the Motion to Dismiss was
resolved. [Doc. 136]. Lego then sought reconsideration of the
Court's Order. [Doc. 137]. The Court vacated its Order
and stayed the requirement for Best-Lock to file an
opposition to Lego's Motion for Partial Summary Judgment
until resolution of Lego's Motion to Reconsider. [Doc.
139]. On January 18, 2017, the Court granted Lego's
Motion to Reconsider, and upon reconsideration, granted
Best-Lock's Emergency Motion in part, staying the
proceedings to provide Best-Lock an opportunity to re-file a
motion pursuant to Fed.R.Civ.P. Rule 56(d), and providing a
schedule for the making of such a motion ("January 18
Ruling") [Doc. 143], thereby setting stage for the
present motion before the Court.
these circumstances, Best-Lock filed the instant Motion to
Defer Consideration of Plaintiff's Motion for Partial
Summary Judgment and to Compel Production ("Motion to
Defer"). [Doc. 150]. Lego filed a memorandum in
opposition, [Doc. 155], and Best-Lock filed a reply. [Doc.
156]. A hearing was held before the Court, at which both
parties presented their arguments on the Motion to Defer.
Subsequently, Best-Lock filed a Motion for Partial Summary
Judgment of its own, [Doc. 164] which is also fully briefed
and will be the subject of a later Ruling.
56(d) permits a court, in the exercise of its discretion, to
defer or deny a decision on summary judgment if a
"nonmovant shows by affidavit or declaration that, for
specified reasons, it cannot present facts essential to
justify its opposition[.]" Fed.R.Civ.P. 56(d). "The
affidavit must include the nature of the uncompleted
discovery; how the facts sought are reasonably expected to
create a genuine issue of material fact; what efforts the
affiant has made to obtain those facts; and why those efforts
were unsuccessful." Paddington Partners v.
Bouchard, 34 F.3d 1132, 1138 (2d Cir.
1994); see also Alphonse Hotel Corp. v.
Tran, 828 F.3d 146, 151 (2d Cir. 2016) (same). The
affidavit must explain with specificity how the facts sought
are reasonably expected to create a genuine issue of material
fact. Alphonse Hotel Corp., 828 F.3d at 151.
court plainly has discretion to reject a request for
discovery if the evidence sought would be cumulative or if
the request is based only on speculation as to what
potentially could be discovered, and a bare assertion that
the evidence supporting plaintiff's allegations is in the
hands of the moving party is insufficient to justify the
denial of summary judgment." Crye Precision LLC v.
Duro Textiles, LLC, 689 Fed.Appx. 104, 108 (2d Cir.
2017) (quoting In re Dana Corp., 574 F.3d 129,
148-48 (2d Cir. 2009)); see also Alphonse Hotel
Corp. 828 F.3d at 151-52 ("[B]are, generalized
assertions cannot justify delaying the resolution of a
summary judgment motion."); Paddington
Partners, 34 F.3d at 1138 ("A court can reject a
request for discovery, even if properly and timely made
through a Rule 56[d] affidavit, if it deems the request to be
based on speculation as to what potentially could be
the party seeking to delay resolution of a summary judgment
motion pursuant to Rule 56(d) must also provide the basis for
believing that the discovery requested exists. Alphonse
Hotel Corp. 828 F.3d at 151. "The requirement that
a party identify what facts are sought and
how they are to be obtained precludes the party from
making purely speculative requests with the hope that
beneficial evidence will serendipitously materialize."
Am. Home Assur. Co. v. ZIM JAMAICA, 418 F.Supp.2d
537, 547 (S.D.N.Y. 2006) (citation omitted).
of Best-Lock's Motion to Defer requires the Court to
revisit the grounds upon which Lego has moved for Partial
seeks judgment as to liability on Count I of its Second
Amended Complaint for copyright infringement. Motion for
Partial Summary Judgment Br., Doc. 131 at 4-12. Lego claims
that it holds certain valid copyrights that cover the
sculpture of its Minifigures; that Best-Lock has copied the
protectable elements of the Minifigures; and that such
copying is illegal, in that there is a substantial similarity
between Best-Lock's figures and the protectable elements
of Lego's Minifigures. Id. at 11-18. Lego also
asserts that it is entitled to summary judgment dismissing
Best-Lock's affirmative defenses of invalidity, laches,
and equitable estoppel, as well as summary judgment on
several of Best-Lock's related Counterclaims, which
assert the invalidity of the copyrights, non-infringement of
the copyrights, and fraud on the copyright office, the CBP
and this Court. Id. at 12-35. Specifically, Lego
argues that Best-Lock cannot prove that the Minifigure
Copyrights are invalid, because (1) the copyrights do not
protect functional elements of the figures, and (2) Lego has
not perpetuated fraud on the copyright office in filing for
the copyrights. Id. at 13-19.
further asserts that Best-Lock's laches and equitable
estoppel defenses depend upon inaction on Lego's part,
which the facts of the case preclude Best-Lock from showing.
Id. at 19-21. In addressing Best-Lock's laches
defense, Lego argues that the defense fails as a matter of
law, in light of the Supreme Court's decision in
Pertrella v. Metro-Goldwyn-Mayer Inc., 134 S.Ct.
1962 (2014). Lego contends that Best-Lock's equitable
estoppel defense also fails as a matter of law because
Best-Lock cannot prove the necessary elements of that
defense. Id. at 21-22. Lego assumes, for purposes of
its motion only, that Best-Lock can satisfy the first element
of the defense: That Lego had knowledge of Best-Lock's
alleged continuing, historical infringement. Id. at
25-26. Nonetheless, Lego argues, Best-Lock cannot prove the
other elements of the defense because (1) Best-Lock cannot
show that Lego acted or failed to act in a manner that would