Conning v. Halpern

ANDREW SCOTT CONNING, Plaintiff, v. JACK HALPERN and CJKI DICTIONARY INSTITUTE, INC., Defendants.

Civil Action No. 18-cv-12336-ADB

UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS

April 22, 2021

MEMORANDUM AND ORDER

BURROUGHS, D.J.

Plaintiff Andrew Scott Conning ("Plaintiff") brings this action against Defendants Jack Halpern and CJKI Dictionary Institute, Inc. ("CJKI," and, together with Halpern, "Defendants"), asserting multiple claims arising out of their contentious business relationship. Plaintiff's basic allegation is that after their business relationship soured, Plaintiff prevailed in an arbitration, but Defendants refused to pay the entire arbitral award and instead engaged in coercive, defamatory, and unfair and deceptive conduct to damage Plaintiff's business relationship with his publisher and to discourage him from pursuing the full amount of the arbitral award. Currently before the Court are Defendants' motion for summary judgment on all remaining claims, [ECF No. 88], and Plaintiff's motion for sanctions and relief pursuant to Federal Rules of Civil Procedure 37(b)(2)(A) and 56(d), [ECF No. 91], which Defendants have moved to strike, [ECF No. 93]. Additionally, Plaintiff has moved to strike certain aspects of Defendants' summary judgment reply brief. [ECF No. 105]. For the reasons set forth below, all four motions are DENIED.

I. BACKGROUND

A. Factual Background

Except as otherwise noted, the following facts are undisputed.¹

CJKI, which Halpern owns and controls, is a world leader in Chinese, Japanese, and Korean lexicography. [ECF No. 90 ¶¶ 1, 3]. Among CJKI's intellectual property is the Kodansha Kanji Learner's Dictionary: Revised and Expanded (the "KKLD"). [Id. ¶ 2].² In 1999, Kodansha International Ltd. ("KIL") published the original version of the KKLD, and in 2012 and 2013, Kodansha USA, Inc. ("KUI"), a KIL affiliate, published the current version. [Id. ¶ 3].

In December 2007, Defendants gave KIL authorization to use certain proprietary material (the "Licensed Data") in a to-be-published book. [ECF No. 90 ¶ 10]. Plaintiff subsequently wrote that book, The Kodansha Kanji Learner's Course (the "KKLC"), and KUI published it in 2013. [Id. ¶¶ 4-5]. The KKLC and KKLD, which were both published by KUI, were designed to be complementary. [ECF No. 100 ¶ 38]. The parties disagree about the extent to which Plaintiff was permitted to use Defendants' material, other than the Licensed Data (the "Other Data"), in the KKLC. Defendants assert that no "formal agreement exists" governing the use of the Other Data, [ECF No. 90 ¶ 11], but Plaintiff counters that Defendants did license him the use of some of the Other Data (readings and equivalents) and that the remainder of the Other Data (entry characters, stroke counts, and radical numbers) are in the public domain and therefore need not be licensed to be lawfully used, [ECF No. 100 ¶ 11]. In addition to permitting Plaintiffto use some of Defendants' material, Halpern also wrote the foreword in the original version of the KKLC (the "Foreword"). [ECF No. 90 ¶ 7]. The parties dispute whether they reached an agreement concerning the perpetual use of the Foreword. While Defendants maintain that no agreement was ever discussed or reached, [id. ¶ 8], Plaintiff avers that his permission to use the Foreword was "not rescindable" (i.e., that he was entitled to include it in the KKLC forever) [ECF No. 100 ¶ 8].

In connection with the publication of the KKLC, Plaintiff and KUI entered into an agreement dated August 23, 2013 (the "KUI Agreement"), pursuant to which Plaintiff was required to obtain and provide proof of any permissions that he needed concerning the publication and/or licensing of the KKLC. [ECF No. 90 ¶ 6]. In 2015, a dispute arose between Plaintiff and Defendants regarding the purported incorporation of Defendants' data in the KKLC, and in June 2015 Halpern told KUI that the KKLC contained unlicensed data belonging to Defendants. [Id. ¶ 13].³ Later in 2015, the parties attempted to settle their differences but were unsuccessful. [Id. ¶ 15; ECF No. 100 ¶ 15].

At some point in December 2017, Halpern sent Plaintiff a written communication that purported to revoke the authorization for use of the Foreword in the KKLC. [ECF No. 90 ¶ 16; ECF No. 100 ¶ 16].⁴ In February 2018, Halpern sent Plaintiff another, similar written communication purporting to "confirm[] revocation." [ECF No. 90 ¶ 17; ECF No. 100 ¶ 17].⁵Because of the parties' dispute concerning the use of Defendants' materials in the KKLC, KUI temporarily suspended distribution of the KKLC. [ECF No. 90 ¶ 18].⁶ To resume distribution, but without conceding that use of the Foreword was unauthorized, Plaintiff suggested removing it from the KKLC. [ECF No. 90 ¶ 21; ECF No. 100 ¶ 21]. Though the parties disagree about exactly when, KUI subsequently resumed publication of the KKLC (without the Foreword and with resulting changes to the title page, copyright page, table of contents, and cover). [ECF No. 90 ¶¶ 22-23; ECF No. 100 ¶¶ 22-23]. That amended version of the KKLC is currently being sold. [ECF No. 90 ¶ 24].

B. Procedural Background

In October 2018, Plaintiff sued Defendants in Massachusetts state court, bringing state law claims for defamation (Count I), tortious interference (Count II), unfair or deceptive trade practices under Massachusetts General Laws Chapter 93A (Count III), and a claim for recognition, confirmation, and enforcement of a foreign arbitral award (Count IV). [ECF No. 1-2 at 31-35]. In November 2018, Defendants removed the action to this Court. [ECF No. 1]. In June 2019, the Court denied Defendants' motion to dismiss for lack of personal jurisdiction. [ECF No. 24]. Defendants then answered, [ECF No. 28], and discovery began.⁷

Discovery has been protracted and excessively contentious. Plaintiff filed, and the Court granted, multiple motions to compel. See [ECF Nos. 52, 54, 70 (motions); ECF Nos. 63, 71, 72(Orders)].⁸ Additionally, although the initial scheduling order established a discovery cut-off date of February 25, 2020, [ECF No. 33], the Court granted multiple discovery deadline extension requests, [ECF Nos. 47, 50, 58, 76], and the discovery deadline was eventually pushed out all the way to October 9, 2020, [ECF No. 76]. As the Court has previously noted, [ECF No. 65; ECF No. 81 at 2], most of the blame for the discovery delays and protracted litigation rests squarely on Defendants.

On February 10, 2021, because the discovery window had closed, and because it had not heard from the parties in months, the Court requested a joint status report regarding the possibility of summary judgment motions. [ECF No. 82]. Shortly thereafter, the parties made three separate filings, [ECF Nos. 83, 84, 85], the gist of which was that Defendants intended to move for summary judgment and Plaintiff believed additional discovery was necessary. On February 19, 2021, in response to these filings, the Court issued an Order making clear that discovery was over, alerting the parties that it viewed successful summary judgment motions as highly unlikely, setting a trial date, and stating that it "expect[ed] no further filings from the parties beyond summary judgment motions, responses to those motions as contemplated by Local Rule 56.1, and the filings called for by the Court's pretrial order." [ECF No. 86].

On March 1, 2021, Defendants filed their motion for summary judgment. [ECF No. 88]. On March 5, 2021, Plaintiff filed a motion for sanctions, [ECF No. 91], which Defendants have moved to strike, [ECF No. 93]. The parties subsequently filed oppositions, [ECF No. 94 (opposition to motion to strike); ECF No. 95 (opposition to motion for sanctions); ECF No. 99 (opposition to motion for summary judgment)], and, with respect to the motions for summaryjudgment and for sanctions, replies. [ECF No. 103 (summary judgment reply); ECF No. 104 (sanctions reply)].⁹

II. LEGAL STANDARD

A. Sanctions

Under Federal Rule of Civil Procedure 37(b)(2),

[i]f a party or a party's officer, director, or managing agent—or a witness designated under Rule 30(b)(6) or 31(a)(4)—fails to obey an order to provide or permit discovery, including an order under Rule 26(f), 35, or 37(a), the court where the action is pending may issue further just orders. They may include the following:

(i) directing that the matters embraced in the order or other designated facts be taken as established for purposes of the action, as the prevailing party claims; . . .

Fed. R. Civ. P. 37(b)(2). "The imposition of sanctions under Rule 37(b) is left to the discretion of the trial court." Patel v. 7-Eleven, Inc., No. 17-cv-11414, 2020 WL 6940124, at *2 (D. Mass. June 24, 2020) (citing Ruiz v. Principal Fin. Grp., No. 12-cv-40069, 2014 WL 257429, at *4 (D. Mass. Jan. 22, 2014)). The First Circuit has identified a "non-exhaustive list of factors" for district courts to consider when imposing sanctions, including "the severity of the discovery violations, legitimacy of the party's excuse for failing to comply, repetition of violations, deliberateness of the misconduct, mitigating excuses, prejudice to the other party and to the operations of the court, and adequacy of lesser sanctions." AngioDynamics, Inc. v. Biolitec AG, 780 F.3d 429, 435 (1st Cir. 2015) (citing Vallejo v. Santini-Padilla, 607 F.3d 1, 8 (1st Cir. 2010)).

B. Summary Judgment

Summary judgment is appropriate where the moving party can show that "there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). "[A]n issue is 'genuine' if it 'may reasonably be resolved in favor of either party.'" Robinson v. Cook, 863 F. Supp. 2d 49, 60 (D. Mass. 2012) (alteration in original) (quoting Vineberg v. Bissonnette, 548 F.3d 50, 56 (1st Cir. 2008)). "A fact is material if its resolution might affect the outcome of the case under the controlling law." Cochran v. Quest Software, Inc., 328 F.3d 1, 6 (1st Cir. 2003). Thus, "[a] genuine...