The opinion of the court was delivered by: Anthony W. Ishii Chief United States District Judge
ORDER ON PLAINTIFFS MOTION FOR SUMMARY JUDGMENT, REQUEST FOR STATUTORY DAMAGES AND RELATED ORDERS Doc. # 19
This is an action for copyright infringement and Lanham Act violation by plaintiff Yash Raj Films, Inc. ("Plaintiff") against defendant Daljit Singh Sidhu ("Defendant"). In criminal case number 07cr0178 (hereinafter the "Criminal Case"), Defendant entered a plea of guilty to a single count of criminal copyright infringement in violation of 17 U.S.C. § 506(a)(1)(A), and 18 U.S.C. § 2319(b)(1). In the instant motion Plaintiff, one of the copyright owners whose works were infringed in the criminal action, seeks summary judgment as to Plaintiff's liability, imposition of permanent restraining orders, statutory damages, and attorney's fees. Federal subject matter jurisdiction exists pursuant to 28 U.S.C. §§ 1331 and 1338. Venue is proper in this court.
FACTUAL BACKGROUND AND PROCEDURAL HISTORY
Although Plaintiff has proffered a number of undisputed material facts in support of the motion for summary judgment, the key facts in controversy in this case are facts necessarily admitted by Defendant in the process of entering a plea of guilty in the Criminal Case. While a number of Plaintiff's proffered undisputed material facts are admitted by Defendant, the material facts that go to the issue of whether there was wilful infringement of Plaintiff's titles and logo are denied by Defendant without exception. Thus, the viability of Plaintiff's motion for summary judgment rests to a large extent on whether Plaintiff may apply the doctrine of collateral estoppel offensively to prevent Defendant from denying facts that were necessarily established by Defendant's plea of guilty in the Criminal Case. Whether Plaintiff may invoke offensive collateral estoppel in this case will be discussed below. The following is a general description of the factual background of the case.
Plaintiff holds the exclusive rights to produce and distribute copyrighted works originally produced in India into the United States in digital media formats including VCD, CD and DVD formats. The works are original motion pictures and audio sound recordings. There is no dispute that the works have been copyrighted in full compliance of the Copyright Act and duly registered. Copyrighted works produced lawfully by Plaintiffs for distribution in the United States and Canada bear Plaintiff's registered trademarks and registered stylized "Y" logos. It is also not disputed that Plaintiff has "complied with all formalities required by the Lantham Act" to register and maintain exclusive rights to Plaintiff's registered marks.
At all times relevant to the allegations set forth in the complaint, Defendant was co-owner and operator of two businesses known as "India Currency Exchange" and "Discount Mart,"*fn1 both located in Bakersfield, California. Among other business activities, Discount Mart rented and sold DVD's of Indian films. On February 25, 2008, Defendant entered a plea of guilty to a single count of criminal copyright infringement in violation of 17 U.S.C. § 506(a)(1)(A) and 18 U.S.C. § 2319(b)(1). In entering the plea of guilty, Defendant admitted the following conduct:
At all time relevant to this Indictment, [Defendant] co-owned and operated businesses known as India Currency Exchange and Discount Mart which, among other things, engaged in the business of selling and renting motion picture digital versatile disc movies. ¶ At all times relevant herein, India Currency Exchange and Discount Mart were located at 250 White Lane, Bakersfield, California. Beginning at a time unknown but no later than on or about December 1, 2005, and continuing to on or about December 31, 2006, in the State and Eastern District of California, [Defendant] did wilfully and for purposes of private financial gain and commercial advantage, infringe the copyright of motion pictures by reproducing and distributing during a 180-day period approximately 1,500 copies of copyrighted works without the permission of the copyright holders, which works had a total retail value of more than $2,500, including, but not limited to:
Motion Picture/Song Title Copyright Owner [Titles Omitted] [Copyright Owners Omitted] Kabbi Khushi Kabhie Gham Yas Raj Films (USA), Inc. Dilwale Dulhania Le Jayenge Yas Raj Films (USA), Inc. Mere Yaar Ke Shaadi Hai Yas Raj Films (USA), Inc. Shree 420 Yas Raj Films (USA), Inc. [Titles Omitted] [Copyright Owners Omitted] all in violation of Title 17, United States Code, Section 506(a)(1)(A) and Title 18, United States Code, sections 2319(b)(1) and (2).
Doc. # 20 - 3 at pp 16 - 17. As part of the plea agreement, Defendant agreed to the forfeiture of approximately 4,635 counterfeit DVD's, a DVD duplicating machine, computer, two printers and assorted related supplies.
In his opposition to Plaintiff's motion for summary judgment, Defendant admits he entered into the plea agreement but states that he only did so to avoid a trial which he could not afford. Defendant denies any infringing activity at all and alleges the forfeited items were used to copy private family and religious videos to DVD format. Plaintiff alleges the copying equipment did not function properly and could not copy Indian DVD's.
The complaint in the instant action was filed on February 4, 2009. Plaintiff's motion for summary judgment was filed on February 8, 2010. Defendant, who is representing himsel pro se in this action, filed his opposition was on January 14, 2010,. Plaintiff's reply was filed on January 21, 2010. On February 4, 2010, the court vacated the date set for oral argument and took the matter under submission.
Summary judgment is appropriate when it is demonstrated that there exists no genuine issue as to any material fact, and that the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); Adickes v. S.H. Kress & Co., 398 U.S. 144, 157 (1970); Poller v. Columbia Broadcast System, 368 U.S. 464, 467 (1962); Jung v. FMC Corp., 755 F.2d 708, 710 (9th Cir. 1985); Loehr v. Ventura County Community College Dist., 743 F.2d 1310, 1313 (9th Cir. 1984).
Under summary judgment practice, the moving party always bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any," which it believes demonstrate the absence of a genuine issue of material fact.
Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Although the party moving for summary judgment always has the initial responsibility of informing the court, the nature of the responsibility varies "depending on whether the legal issues are ones on which the movant or the non-movant would bear the burden of proof at trial." Cecala v. Newman, 532 F.Supp.2d 1118, 1132-1133 (D. Ariz. 2007). When the moving party has the burden of proof at trial, that party must carry its initial burden at summary judgment by presenting evidence affirmatively showing, for all essential elements of its case, that no reasonable jury could find for the non-moving party. United States v. Four Parcels of Real Property, 941 F.2d 1428, 1438 (11th Cir.1991) (en banc); Calderone v. United States, 799 F.2d 254, 259 (6th Cir. 1986); see also E.E.O.C. v. Union Independiente De La Autoridad De Acueductos Y Alcantarillados De Puerto Rico, 279 F.3d 49, 55 (1st Cir. 2002) (stating that if "party moving for summary judgment bears the burden of proof on an issue, he cannot prevail unless the evidence that he provides on that issue is conclusive.")
If the moving party meets its initial responsibility, the burden then shifts to the opposing party to establish that a genuine issue as to any material fact actually does exist. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986); First Nat'l Bank of Arizona v. Cities Serv. Co., 391 U.S. 253, 288-89 (1968); Ruffin v. County of Los Angeles, 607 F.2d 1276, 1280 (9th Cir. 1979). In attempting to establish the existence of this factual dispute, the opposing party may not rely upon the mere allegations or denials of its pleadings, but is required to tender evidence of specific facts in the form of affidavits, and/or admissible discovery material, in support of its contention that the dispute exists. Rule 56(e); Matsushita, 475 U.S. at 586 n.11; First Nat'l Bank, 391 U.S. at 289; Strong v. France, 474 F.2d 747, 749 (9th Cir. 1973). The opposing party must demonstrate that the fact in contention is material, i.e., a fact that might affect the outcome of the suit under the governing law, Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); T.W. Elec. Serv., Inc. v. Pacific Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir. 1987), and that the dispute is genuine, i.e., the evidence is such that a reasonable jury could return a verdict for the nonmoving party, Anderson, 477 U.S. 248-49; Wool v. Tandem Computers, Inc., 818 F.2d 1433, 1436 (9th Cir. 1987).
In the endeavor to establish the existence of a factual dispute, the opposing party need not establish a material issue of fact conclusively in its favor. It is sufficient that "the claimed factual dispute be shown to require a jury or judge to resolve the parties' differing versions of the truth at trial." First Nat'l Bank, 391 U.S. at 290; T.W. Elec. Serv., 809 F.2d at 631. Thus, the "purpose of summary judgment is to 'pierce the pleadings and to assess the proof in order to see whether there is a genuine need for trial.'" Matsushita, 475 U.S. at 587 (quoting Fed. R. Civ. P. 56(e) advisory committee's note on 1963 amendments); International Union of Bricklayers v. Martin Jaska, Inc., 752 F.2d 1401, 1405 (9th Cir. 1985).
In resolving the summary judgment motion, the court examines the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any. Rule 56(c); Poller, 368 U.S. at 468; SEC v. Seaboard Corp., 677 F.2d 1301, 1305-06 (9th Cir. 1982). The evidence of the opposing party is to be believed, Anderson, 477 U.S. at 255, and all reasonable inferences that may be drawn from the facts placed before the court must be drawn in favor of the opposing party, Matsushita, 475 U.S. at 587 (citing United States v. Diebold, Inc., 369 U.S. 654, 655 (1962)(per curiam); Abramson v. University of Hawaii, 594 F.2d 202, 208 (9th Cir. 1979). Nevertheless, inferences are not drawn out of the air, and it is the opposing party's obligation to produce a factual predicate from which the inference may be drawn. Richards v. Nielsen Freight Lines, 602 F. Supp. 1224, 1244-45 (E.D. Cal. 1985), aff'd, 810 F.2d 898, 902 (9th Cir. 1987).