The Elf ½ (elfwreck) wrote in lexiconga, @ 2008-04-22 21:12:00 |
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a. Under the Good Cause/Reasonableness Test Plaintiffs Are Entitled to Expedited DiscoveryPlaintiffs have good cause to request expedited discovery as it is necessary to permit Plaintiffs to develop a full and appropriate evidentiary record for timely consideration by this Court of Plaintiffs' upcoming motion for preliminary injunctive relief. Defendant has refused outright to give Plaintiffs the materials it has sought, namely a copy of the Infringing Book or the latest manuscript, the proposed cover, and any advertising or marketing materials related thereto. Given the significance of the issues, it is extremely important that Plaintiffs have the opportunity to present to this Court a fully developed record, an opportunity it cannot have until it obtains this limited discovery of Defendant. The requested discovery will provide Plaintiffs with a fair opportunity to demonstrate to the Court more fully that Defendant has engaged in illegal behavior that will continue to damage Plaintiffs' rights in to their intellectual property.
b. Plaintiffs Can Establish "Some Probability of Success on the Merits" Under the Notaro StandardThe facts, on their face, reveal that Plaintiffs have far greater than "some probability of success on the merits" based on claims for both copyright infringement and trademark infringement. Notaro, 95 F.R.D. at 405 (emphasis added).
There can be no dispute but that Ms. Rowling is the valid copyright owner of the Harry Potter Books and Warner Bros. is the valid copyright owner of the Harry Potter Films. Nor can there be any dispute that Defendant had access to Plaintiffs copyrighted works, which is presumed where, as here, a work is world-renowned. See Warner Bros. Inc. v. American Broad. Cos., 654 F.2d 204, 208 (2d Cir. 1981) (access to Superman character is assumed based on character's worldwide popularity).i. Plaintiffs Can Show "Some Probability of Success" on their Copyright Infringement Claim
Similarly, there is more than "some probability" that Plaintiffs can succeed on their trademark infringement claims. There is no disputing that Warner Bros. owns numerous trademark registrations for HARRY POTTER for a variety of goods and services including books and films. Based on Defendant's own description of the Infringing Book and the image appearing on the Defendant's own website in connection therewith, Defendant clearly intends to prominently feature the HARRY POTTER mark in such a way that it will give the mistaken impression to consumers, some of which will be children, that the Infringing Book is authorized when it is not. Defendant's book apparently will simply say the words "Harry Potter Lexicon" in large letters and in a font reminiscent of the one used in other Harry Potter Works. Cendali Decl. ¶ 7. The dominant feature of Defendant's title is HARRY POTTER and the addition of a descriptive word such as "Lexicon," which literally means "dictionary," does nothing to distinguish Defendant's use from the myriad other uses by Plaintiffs. The front cover of the Infringing Book contains numerous other indicia from the Harry Potter Works, which only adds to the likelihood of confusion.ii. Plaintiffs Can Show "Some Probability of Success" on their Trademark Infringement Claim
c. Irreparable InjuryNew York courts routinely hold that infringement of a trademark or copyright results in a presumption of irreparable injury. See, e.g., ABKCO Music. 96 F.3d at 66 (once a plaintiff demonstrates a prima facie case of copyright infringement, the court will presume irreparable harm); Hasbro Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 73 (2d Cir. 1988) ("[i]n a Lanham Act case a showing of likelihood of confusion establishes both a likelihood of success on the merits and irreparable harm..."). As Plaintiffs have demonstrated some probability of success on the merits of its copyright and trademark infringement claims, irreparable injury may be presumed.
d. Plaintiffs Can Show A Connection Between Expedited Discovery and the Avoidance of Irreparable InjuryThe discovery that Plaintiffs seek is directly tied to their motion for preliminary injunction, which is designed to prevent further irreparable harm to Plaintiffs. Defendants have refuse to provide the materials that Plaintiffs seek and, moreover, have refused to delay publication of the Infringing Book so that the parties could explore the issues involved in this dispute, thus creating the need for more urgent relief. Plaintiffs merely are seeking a copy of the Infringing Book or the latest manuscript, the proposed cover, and any advertising or marketing materials related thereto. These materials are at the heart of Plaintiffs copyright and trademark infringement claims and are necessary to present a full and accurate record to the Court.
e. The Injury That Plaintiffs Would Suffer Without Expedited Discovery is Greater Than That of Defendant If Expedited Relief Were GrantedThe burden to defendant is minimal. The requested discovery is limited solely to the Infringing Book or the current version of the manuscript and the last draft prior thereto, its proposed cover and advertising or marketing plans developed in connection therewith. Such discovery is not likely to be voluminous and Defendant presumably would have this information readily available. Moreover, Defendant would have to participate in discovery on these issues in any event as the requests are literally at the heart of this case and therefore discoverable under Fed. R. Civ. P. 26.