Targeted discovery is instrumental in proving willful infringement of copyright

Targeted discovery is instrumental in proving willful infringement of copyright:  Supragenix LLC v. James Garrity

Enhanced damages for willful infringement isn’t guaranteed in the 10th Circuit  — especially if the plaintiff doesn’t ask the right questions.  In Supragenix LLC v. Garrity, No. 2:13-CV-142, 2016 WL 1171525 (D. Utah Mar. 24, 2016), the defendant refused to litigate beyond filing an answer, and failed to respond to discovery requests after two Orders to Show Cause.   

In its motion for default judgment, Supragenix LLC asked for $150,000 in statutory damages for willful infringement.  The court ordered supplemental briefing to address the court’s ability to award statutory damages prior to a finding of willful infringement.  Supragenix’s supplemental brief asserted only that the defendant had neither responded during discovery nor produced requested documents, and therefore the facts in the Amended Complaint should be treated as established by the court in order to support a finding of willful infringement.

The court disagreed with this position because, despite the defendant’s failure to respond during discovery, James Garrity had answered the Amended Complaint and denied any allegations of infringement.  Supragenix also failed to cite persuasive authority to support its argument that the court treat the plaintiff’s allegations as admitted.  Finally, the court determined that Suprgenix had not requested discovery documentation or admissions that would have revealed evidence of willful infringement.

Additionally, the court also noted that the Supragenix failed to identify which portions of the Amended Complaint set forth facts that supported its claim of willful infringement.  As the court was under no obligation to review the  Amended Complaint and identify which portions supported the plaintiff, this lack of specificity worked against Supragenix’s claim.  

While the court agreed that sanctions were appropriate for Garrity’s lack of compliance during discovery, Supragenix’s broad discovery requests and inability to cite persuasive authority for their position undermined their claim for statutory damages.  As a result, absent further evidentiary materials, the court ordered the proposed default judgment and permanent injunction, but without the requested $150,000 in statutory damages for willful infringement.  For copyright holders seeking willful infringement damages, detailed pleading and discovery requests specifically directed towards willfulness are key to proving up the claim.