United States District Court,

S.D. New York.

JOHN WILEY & SONS, INC., Plaintiff,
v.
Faisal ELHALIS, Defendant.

No. 05 Civ. 2979 DAB RLE.

Feb. 14, 2006.

REPORT AND RECOMMENDATION

ELLIS, Magistrate J.

I. INTRODUCTION

*1

(Cite as: 2006 WL 406311, *1 (S.D.N.Y.))

Plaintiff, John Wiley & Sons, Inc. ("Wiley"), filed this copyright and trademark
infringement action against defendant, Faisal Elhalis ("Elhalis"), on March 18,
2005, asserting claims under the Copyright Act, 17 U.S.C. § 101, et seq, the
Lanham Act, 15 U.S.C. § 1501, et seq, and a state law claim for common law unfair
competition. Because of problems in receiving Elhalis's responses to discovery
requests, Wiley has moved to compel those responses and also moved for sanctions,
including default judgment, against Elhalis. For the following reasons, I
recommend that Wiley's motion to compel be GRANTED. However, I further recommend
that Wiley's motion for sanctions be DENIED.

II. BACKGROUND

Wiley is a publisher of books and journals, including college textbooks and

instructor's solutions manuals. Wiley owns trademark registrations for its names
John Wiley & Sons; Wiley; and the John Wiley Colophon ("the Wiley trademarks"),
all used on higher education textbooks. According to Wiley, Elhalis has sold
copies of Wiley's instructors solutions manuals on-line, which devalues their
marketability with professors, since students tend to use the manuals to cheat on
exams. Pre-Trial Statement at 5-7. Wiley sent a cease and desist letter in
February of 2004, to which Elhalis responded, and agreed to stop selling and
distributing the manuals. Id. at 7. However, Wiley alleges Elhalis has continued
to sell and distribute the manuals on-line. Id.

Elhalis appeared in this action and the parties initiated discovery. Elhalis
failed to respond to Wiley's discovery requests, and in a telephone conference on
August 17, 2005, the undersigned ordered Elhalis to do so. According to Wiley, it
never received Elhalis's responses, despite the fact that Wiley's counsel, William
Dunnegan ("Dunnegan"), received various e-mails in which Elhalis indicated he had
e-mailed his responses to him. Declaration of William Dunnegan ("Dunnegan Decl.")
¶ 6, Exh. D. Elhalis ultimately agreed to fax his responses because Dunnegan told
him he had not received the e-mails bearing the attachments. Id.In an e-mail on
August 26, 2005, Elhalis said that he would fax the documents to Dunnegan "within
an hour." Id.Four days later, on August 30, 2005, having not received the
documents, Wiley filed the instant motion to compel and for sanctions, including
default judgment. Dunnegan affirmed that he had not received the documents by that
time. Id. ¶ 6.

On January 6, 2006, the undersigned issued an order to show cause why default
judgment should not be granted against Elhalis as a sanction for his failure to
respond to Wiley's discovery requests. Elhalis was given until January 19, 2006,
to respond, and this Court received no communication from him. Noticing that
Wiley's motion to compel was served upon Elhalis, but to a different address than
that listed in the Court's file, this Court attempted to contact Elhalis by e-
mailing him and leaving a message with family members on January 23, 2006. Elhalis
called the Court that day, verified that his address had changed and that he did
not receive this Court's January 6 order. In fact, on February 7, the order was
returned in the mail marked "address unknown." This Court then gave Elhalis until
February 1, 2006, to comply with the earlier order by demonstrating why default
should not be granted. On January 30, 2006, Elhalis contacted the Court, asking to
fax his response, and was told to mail it in hard copy to both the Court and to
Wiley. On February 6, 2006, Elhalis contacted the Court to say that he had mailed
the response on February 4, 2006. On February 9, 2006, the Court had not yet
received the response and asked Elhalis to fax them, which he did the following
day. This Court has not yet received the hard copies Elhalis said he mailed.

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(Cite as: 2006 WL 406311, *2 (S.D.N.Y.))

Elhalis's response ("Elhalis Resp.") asserts that he made repeated attempts to
send his responses to Wiley's discovery requests through e-mail and finally
obtained a fax number from Wiley when those attempts failed. Elhalis Resp. at 2-4.
He then apparently faxed the documents, but not until September 1, four days after
he said he would, and two days after Wiley filed the motion to compel. Elhalis has
submitted a fax transmittal sheet from Kinko's, dated September 1, 2005,
indicating that the transmission was "OK." Id .at 8. The number to which he sent
the fax is the same fax number listed in the copy of the e-mail he has submitted
from Dunnegan telling him which number to use to fax his responses. Id.This is
also the same fax number listed in the Court's file for Dunnegan. The fax
transmittal sheet shows that the document Elhalis sent to Dunnegan is the same
"Response to Interrogatories of Plaintiff to Defendant" that he has included in
his response to the Court. Id. at 6-8. Elhalis has also submitted the same copies
of e-mails that Wiley submitted, with one addition: an e-mail from Wiley on
September 26, 2005, stating that he had still not received the documents or any
response from Elhalis to Wiley's motion to compel. Id. at 2.

II. DISCUSSION

In accordance with this Court's earlier order given in a telephone conference on

August 17, 2005, Wiley's motion to compel Elhalis to respond to the discovery
requests is GRANTED. If Wiley has not yet received Elhalis's responses, Elhalis
must make very certain that Wiley receive those and any other outstanding
discovery requests immediately.
Wiley also moves for sanctions, including default judgment, against Elhalis for
failing to comply with the August 17, 2005 order. Federal Rule of Civil Procedure
Rule ("FRCP") 37(b)(2)(C) gives a district court the discretion to choose among a
number of sanctions if a party fails to obey a discovery order, including the
grant of default judgment. See John B. Hull, Inc. v. Waterbury Petroleum Prod.,
845 F.2d 1172, 1176 (2d Cir.1988). Grant of default as a sanction is "a drastic
penalty" only for "extreme circumstances." Salahuddin v. Harris, 782 F.2d 1127,
1132 (2d Cir.1986). The failure to comply, therefore, must be due to "willfulness,
bad faith, or any fault." Id. The party must have demonstrated a "flagrant
disregard" for the court's order. John B. Hull, 845 F.2d at 1177. There should
also be a finding that "less drastic sanctions will not work." Gittens v. Garlocks
Sealing Tech., 19 F.Supp.2d 104, 108 (W.D.N.Y.1998). Particularly for a pro se
party, the Court should give notice that violation of the order may result in
default judgment. See Casilla v. New York State Dep't of Labor, 2005 WL 3502050,
at *5 (S.D.N.Y. Dec. 21, 2005). A pro se litigant deserves leniency, but if "
'they flout [the] obligation [to comply with court orders] they, like all
litigants, must suffer the consequences of their actions." ' Jones v. Hirschfeld,
2003 WL 21543531, at *1 (S.D.N.Y. July 9, 2003) ( quoting McDonald v. Head
Criminal Court Supervisor Officer, 850 F.2d 121, 124 (2d Cir.1988)).

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(Cite as: 2006 WL 406311, *3 (S.D.N.Y.))

Given the standard outlined above, Wiley's motion for sanctions in the form of
default judgment against Elhalis should be DENIED. It is clear that Elhalis has
not been sufficiently vigilant about his responsibilities in discovery. He told
Wiley he would fax on August 26, but did not send the fax until September 1. He
then did not respond to Wiley's motion to compel. Despite these deficiencies in
Elhalis's compliance with this Court's order, a number of factors weigh against a
grant of default judgment at this time.

Elhalis is acting pro se. He may not have understood that failure to comply, even
tardiness in compliance, with the Court's order could result in sanctions against
him. "A failure to comply with a discovery order is considered willful 'when the
court's orders have been clear, when the party has understood them, and when the
party's non-compliance is not due to factors beyond the party's control." '
Casilla, 2005 WL 3502050, at *5 ( quoting Baba v. Japan Travel Bureau, 165 F.R.D.
398, 402-03 (S.D.N.Y.1996), aff'd, 111 F.3d 2 (2d Cir.1997)). This standard is not
met here. The e-mails between the parties demonstrate that Elhalis was attempting
to e-mail his discovery responses and was having technical difficulties,
indicating that his failure to comply may have been due to factors beyond his
control. Elhalis e-mailed Dunnegan his responses numerous times but the e-mails
did not go through. Dunnegan Decl., Exh. D. Elhalis asked for another e-mail
address, but the parties then agreed Elhalis would fax the documents instead.
Id.Dunnegan does not explain whether he received any faxes from Elhalis, but
simply notes that Elhalis did not comply with the order. Elhalis's submission
indicates that he did send the fax, although he did so two days after Dunnegan
filed his motion to compel. Elhalis Resp. at 8.

It appears that Elhalis did comply with the Court order, although not in a timely
manner. Furthermore, there is no indication that other sanctions might not be
sufficient if Elhalis's discovery abuses continue. "[W]here a pro se plaintiff's
non-compliance has not yet resulted in substantial prejudice, and the plaintiff
has not directly been told that his attempts to frustrate discovery will result in
dismissal, lesser sanctions than dismissal are appropriate." Casilla, 2005 WL
3502050, at *6 (emphasis in original). Wiley has not proposed an alternative and
has not argued or demonstrated that Elhalis's actions have caused any prejudice.
As there is a strong "preference that litigation disputes be resolved on the
merits, not by default," Cody v. Mello, 59 F.3d 13, 15 (2d Cir.1995), no default
should be granted at this time.

While the current situation does not merit the grant of default judgment, the fact
that Elhalis appears to have cut off communication with Dunnegan and failed to
cooperate with him to put together the parties' joint pretrial order, see Pre-
Trial Statement at 1, demonstrates bad faith. Were Elhalis to continue in this
regard, the situation would constitute the "flagrant disregard" or "extreme
circumstances" necessary for a grant of default judgment against him. See, e.g.,
Spence v. Maryland Cas. Co., 803 F.Supp. 649, 661 (W.D.N.Y.1992) (listing cases
finding "flagrant disregard," including parties who refused to answer all
interrogatories, failed to answer discovery demands requesting itemization of
claimed damages, engaged in repeated obstructionist conduct over years, or
continued to refuse to answer questions at a deposition in defiance of court
order). Elhalis now has notice that failure to comply with any of this Court's
orders could warrant entry of default judgment against him, and any further
deficiencies in his participation in this action will be considered willful and
warrant a grant of default judgment against him.

III. CONCLUSION

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(Cite as: 2006 WL 406311, *4 (S.D.N.Y.))

For the foregoing reasons, Wiley's motion for sanctions in the form of default
judgment should be DENIED. However, Wiley's motion to compel should be GRANTED.
Elhalis must ensure that Wiley has received his responses to the discovery
requests and that any further submissions to Wiley or to the Court are received.
Furthermore, Elhalis is responsible for defending himself in this case. He must be
in contact with Wiley and cooperate in the parties' joint submissions to Judge
Batts as the case proceeds to trial. He must send written notice of his new
address and any subsequent changes in his contact information to the Clerk of
Court. If he fails in any of these requirements, having now had notice that such
failure could warrant a grant of default judgment against him, any subsequent
recommendation from this Court will include a default.

Pursuant to Rule 72, Federal Rules of Civil Procedure, the parties shall have ten
(10) days after being served with a copy of the recommended disposition to file
written objections to this Report and Recommendation. Such objections shall be
filed with the Clerk of the Court and served on all adversaries, with extra copies
delivered to the chambers of the Honorable Deborah A. Batts, 500 Pearl Street,
Room 2510, and to the chambers of the undersigned, Room 1970. Failure to file
timely objections shall constitute a waiver of those objections both in the
District Court and on later appeal to the United States Court of Appeals. See
Thomas v. Arn, 474 U.S. 140, 150 (1985); Small v. Sec'y of Health and Human
Servs., 892 F.2d 15, 16 (2d Cir.1989) ( per curiam ); 28 U.S.C. § 636(b)(1) (West
Supp.1995); Fed.R.Civ.P. 72, 6(a), 6(e).
S.D.N.Y.,2006.
John Wiley & Sons, Inc. v. Elhalis
Not Reported in F.Supp.2d, 2006 WL 406311 (S.D.N.Y.)