Case 2:11-cv-00584-DDP-PJW Document 151

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KATTEN MUCHIN ROSENMAN LLP Zia F. Modabber (SBN 137388) zia.modabber@kattenlaw.com Tami Kameda Sims (SBN 245628) tami.sims@kattenlaw.com Sara Karubian (SBN 266219) sara.karubian@kattenlaw.com 2029 Century Park East, Suite 2600 Los Angeles, CA 90067-3012 Telephone: 310.788.4400 Facsimile: 310.788.4471 KINSELLA WEITZMAN ISER KUMP & ALDISERT LLP Howard Weitzman (SBN 38723) hweitzman@kwikalaw.com Jeremiah T. Reynolds (SBN 223554) jreynolds@kwikalaw.com 808 Wilshire Boulevard, 3rd Floor Santa Monica, California 90401 Telephone: 310.566.9800 Facsimile: 310.566.9850 Attorneys for John Branca and John McClain, Executors of the Estate of Michael J. Jackson, Michael Jackson Company, LLC, MJJ Productions, Inc. and Optimum Productions UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA CENTRAL DIVISION ) ) ) ) ) Plaintiffs, ) vs. ) HOWARD MANN, an individual, et al., ) ) ) Defendants. ) ) ) Vintage Associates, LLC, ) ) Counter-Plaintiff, ) vs. )) John Branca, John McClain, Executors of) ) the Estate of Michael Jackson, ) ) Counter-Defendants. JOHN BRANCA AND JOHN MCCLAIN, Executors of the Estate of Michael J. Jackson, et al., CASE NO. CV-11-584 DDP (PJWx) [Hon. Dean D. Pregerson] PLAINTIFFS STATUS UPDATE RE FINAL PRETRIAL CONFERENCE AND REQUEST FOR COURT TO SPECIFY ISSUES FOR TRIAL

STATUS UPDATE RE FINAL PRETRIAL CONFERENCE AND REQUEST FOR COURT TO SPECIFY ISSUES FOR TRIAL

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Plaintiffs submit the following update regarding the final pretrial conference and hereby request that the Court specify the issues for trial in the pretrial order: 1. Summary Judgment Established Liability On All Claims, Leaving

Only Damages For Trial. On August 10, 2012, the Court granted Plaintiffs motion for partial summary judgment. Among other things, the Court granted summary judgment on liability in favor of Plaintiffs on their copyright claims, false designation of origin claim under the Lanham Act, misappropriation of likeness claim, unfair competition claim, cybersquatting and cyberpiracy claims.1 As a result, Plaintiffs submit that trial

concerns only the measure of damages to be awarded to Plaintiffs. On August 20, 2012 the parties submitted: (a) joint jury instructions; and (b) disputed jury instructions. On August 21, 2012, the parties submitted a joint

[proposed] pretrial order. From those pretrial submissions, it became clear that the parties differ drastically on the scope and issues for trial. To clarify and streamline the issues for trial, on August 22, 2012, Plaintiffs informed Defendants that for a number of reasons, not the least of which is Plaintiffs perception of the ability to collect on a money judgment, Plaintiffs proposed to proceed at trial only on the damages specified in their Experts report (between $5$12 million). These damages constitute the Experts opinion of the fair market value of a license to use the intellectual property assets unlawfully infringed. Plaintiffs would also seek their attorneys fees under the Copyright Act and Cal. Civ. Code Section 3344.1. /// /// /// The Court also: (a) granted Plaintiffs summary judgment on their accounting claim; (b) granted Plaintiffs claim for declaratory relief; (c) issued a permanent injunction; and (d) granted Plaintiffs summary judgment on defendant Vintage Associate LLCs counter-claim.
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Plaintiffs explained that by not pursuing other available damages including (1) punitive damages, (2) statutory damages under the Lanham Act, Copyright Act or Cal. Civ. Code Section 3344.1 or (3) the disgorgement of Defendants profits, the trial would likely involve only one witness, Plaintiffs Expert. (Defendants have no expert.2) Plaintiffs proposal and explanation was sent in an email, a true copy of which is attached hereto Exhibit A. Unfortunately, Defendants wrote back stating, among other things, that they intended to present an expansive amount of evidence involving a host of other issues, none of which relates to the limited damages proposed to be offered at trial by Plaintiffs. This includes a broad range of evidence on the irrelevant issue of their supposed innocent state of mind in connection with all their infringing activity. They also raised a host of other extraneous issues, all of which are included in their email to Plaintiffs counsel on August 23, 2012, a copy of which is attached hereto as Exhibit B. Defendants further intend, as their proposed (but disputed) jury instructions make clear, to raise additional defenses to the underlying merits that were never raised in opposition to Plaintiffs motion for summary judgment, such as fair use. Moreover, Defendants identify 29 potential witnesses on their witness list, all of whom they propose to call during what they claim will be a three day trial. To avoid inefficiency in both preparation for and presentation of irrelevant issues, Plaintiffs ask the Court to define the scope of this trial at the Final Pretrial Conference in order to limit trial to: the amount of Plaintiffs actual damages, as measured by the fair market value of Defendants wrongful use of Plaintiffs copyrighted works and rights of publicity, plus attorneys fees. Further, the Court

Defendants did not properly designate any expert, instead simply naming someone who they promised would testify as an expert. No report was ever provided, however. Accordingly, Plaintiffs filed a motion in limine to preclude Defendants from presenting any expert testimony at trial. Defendants filed a non-opposition to Plaintiffs motion.
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should make clear that (a) Defendants intent; and (b) Defendants purportedly new affirmative defenses, are not issues to be litigated at trial.3 2. Defendants Intent Is Irrelevant To Plaintiffs Actual Damages.

In light of Plaintiffs remaining request for damages, evidence presented at trial as to Defendants state of mind is irrelevant and would waste time and the resources of the Court and the parties. The Experts proposed fair market value of the infringing uses of Plaintiffs copyrights and publicity rights is the proper measure of actual damages under the Copyright Act and California Civil Code Section 3344.1. See Polar Bear Productions, Inc. v. Timex Corp., 384 F.3d 700, 709 (9th Cir. 2004); Solano v. Playgirl, Inc., 292 F.3d 1078, 1090 (9th Cir. 2002). Plaintiffs Lanham Act claims are based on the same conduct that supports the Section 3344.1 claim namely the unlawful use of Michael Jacksons name, image and likeness. State of mind, intention and alleged willfulness or absence thereof are irrelevant to the measure of actual damages. Faulkner v. Natl Geographic Soc., 576 F. Supp. 2d 609, 613-14 (S.D.N.Y. 2008) (granting motion in limine to preclude evidence as to willfulness in copyright infringement case where plaintiff sought actual damages based on a reasonable license fee); Jarvis v. K2 Inc., 486 F. 3d 526, 533-35, fn. 9 (9th Cir. 2007) (the district court properly based its calculations on objective considerations of market value); Waits, 978 F.2d at 1102-03 (defendants state of mind not an identified factor in determining fair market value of plaintiffs publicity rights).4 For example, in Jarvis, the Ninth Circuit explained that the plaintiffs policy argument about deterring infringers by charging them the higher price is . . . unsupported by the statutory text or by the case laws emphasis on fair market value at the time of the infringement. Making the plaintiff whole is plainly different from In the event that the Court is inclined to allow Defendants to proceed with these additional issues at trial and broaden the scope, Plaintiffs respectfully request that they be permitted to add jury instructions as to these additional issues. 4 Plaintiffs have located no case where a defendants state of mind was considered as factor in calculating actual damages based on the fair market value of the wrongful use of publicity rights.
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punishing the infringer by charging the highest possible rate for the infringement. Jarvis, 486 F. 3d at 535. Under the circumstances of this case, a trial on Defendants state of mind is not only irrelevant, but will pointlessly waste the resources of the Court and the parties, and result in an extended trial for no practical purpose. (Candidly, if Plaintiffs thought Defendants had sufficient assets to satisfy the substantial judgment that would be sought on these other damages theories, they would proceed.) 3. Wrong. Defendants claim that they are entitled to raise new affirmative defenses at trial. However, Defendants were required to raise any affirmative defenses in opposition to Plaintiffs motion for summary judgment. A summary judgment on the issue of liability encompasses all affirmative defenses and implicitly challenges the nonmovant to establish a basis for finding that the defenses are both applicable and supported by the sufficient facts. See Pantry, Inc. v. Stop-N-Go Foods, Inc., 796 F. Supp. 1164, 1167 (S.D. Ind. 1992). Consequently, the failure to raise an affirmative defense in opposition to a motion for summary judgment constitutes an abandonment of the defense. United Mine Workers of Am. 1974 Pension v. Pittston Co., 984 F.2d 469, 478 (D.C. Cir. 1993); United States v. Mottolo, 26 F.3d 261, 263 (1st Cir. 1994) (At summary judgment on the issue of liability, unproffered affirmative defenses to liability normally are deemed abandoned.). /// /// /// /// /// /// ///
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STATUS UPDATE RE FINAL PRETRIAL CONFERENCE AND REQUEST FOR COURT TO SPECIFY ISSUES FOR TRIAL

Defendants Assertion of Entitlement to Affirmative Defenses Is

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Accordingly, Defendants are precluded from raising at trial, purportedly new affirmative defenses, which they did not raise in opposition to Plaintiffs motion for summary judgment or, in some instances, in their responsive pleadings. See Enlow v. Salem-Keizer Yellow Cab Co., Inc., 389 F.3d 802, 819 (9th Cir. 2004) (Failure to plead an affirmative defense therefore results in a waiver of that defense.). Dated: August 24, 2012 KATTEN MUCHIN ROSENMAN LLP

By /s/ Zia F. Modabber Zia F. Modabber Attorneys for John Branca and John McClain, Executors of the Estate of Michael J. Jackson, Michael Jackson Company, LLC, MJJ Productions, Inc. and Optimum Productions Dated: August 24, 2012 KINSELLA WEITZMAN ISER KUMP & ALDISERT LLP

By /s/ Howard Weitzman Howard Weitzman Attorneys for John Branca and John McClain, Executors of the Estate of Michael J. Jackson, Michael Jackson Company, LLC, MJJ Productions, Inc. and Optimum Productions

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EXHIBIT A

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EXHIBIT B

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