Case 2:21-cv-04848-SSS-KS Document 159 Filed 06/17/22 Page 1 of 88 Page ID #:6000
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`QUINN EMANUEL URQUHART
`& SULLIVAN, LLP
`Alex Spiro (pro hac vice)
`alexspiro@quinnemanuel.com
`Cory D. Struble (pro hac vice)
` corystruble@quinnemanuel.com
`51 Madison Avenue, 22nd Floor
`New York, New York 10010
`Telephone: (212) 849-7000
`Facsimile: (212) 849-7100
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`Robert M. Schwartz (Bar No. 117166)
`robertschwartz@quinnemanuel.com
`Dylan C. Bonfigli (Bar No. 317185)
`dylanbonfigli@quinnemanuel.com
`865 South Figueroa Street, 10th Floor
`Los Angeles, California 90017-2543
`Telephone: (213) 443-3000
`Facsimile: (213) 443-3100
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`Attorneys for Plaintiff
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`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION
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`SHAWN CARTER, also known as
`JAY-Z, an individual,
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`Plaintiff,
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`v.
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`JONATHAN MANNION, an
`individual, and JONATHAN
`MANNION PHOTOGRAPHY LLC, a
`New York limited liability company,
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`Defendants.
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`Case No. 2:21-cv-04848-PA-KS
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`PLAINTIFF’S MOTION IN LIMINE
`NO. 1 (COPYRIGHT);
`DECLARATION OF DYLAN C.
`BONFIGLI
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`The Honorable Percy Anderson
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`July 11, 2022
`Date:
`1:30 p.m.
`Time:
`Courtroom: 9A
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`Trial Date: July 19, 2022
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`REDATED VERSION OF DOCUMENT PROPOSED TO BE
`FILED UNDER SEAL
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`Ca se No. 2:21-cv-04848-PA-KS
`PLAINTIFF’S MOTION IN LIMINE NO. 1
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`Case 2:21-cv-04848-SSS-KS Document 159 Filed 06/17/22 Page 2 of 88 Page ID #:6001
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`TO THE COURT, ALL PARTIES, AND THEIR COUNSEL OF RECORD:
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`PLEASE TAKE NOTICE that on July 11, 2022, at 1:30 p.m. or as soon as the
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`matter may be heard, in Courtroom 9A of the above-titled Court, located at 350 W.
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`1st Street, Los Angeles, California 90012, Plaintiff Shawn Carter will, and hereby
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`does, move in limine for an order excluding any argument, testimony, or evidence
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`regarding Defendants’ claim that Defendant Mannion is the owner of the copyright
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`in photos of Jay-Z, including any assertions that Defendants granted copyright
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`licenses to Plaintiff or nonparties.
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`This motion is based on the grounds that the question of whether Defendant
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`Mannion owns any interest in the copyright to any photograph, and any issues
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`related to any such copyright interest, are not relevant to any claim or defense in this
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`right-of-publicity case, see Fed. R. Evid. 401, 402, and will serve only to confuse
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`the fact-finder and prejudice Plaintiff. See Fed. R. Evid. 403.
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`The documentary evidence subject to this motion includes: JX-14, JX-232,
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`JX-238, JX-241, JX-242, JX-243, JX-244, JX-245, JX-246, JX-247, JX-248, JX-
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`249, JX-250, JX-275, JX-277, JX-278, JX-301.
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`The deposition evidence includes: Kempler Tr. 25:6-26:4, 26:17-27:17,
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`45:23-45:25, 46:2-46:5, 51:6-51:12, 52:8-24, 54:25-55:8, 58:15-20, 55:21-56:15,
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`57:16-25, 58:2-22, 59:10-20; 60:6-9, 62:23-25, 63:5-22, 63:23-64:15, 65:1-12, 66:3-
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`7, 67:24-68:17, 70:10-70:12, 72:1-21, 76:1-18, 77:25-78:2, 78:9-20, 79:10-14,
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`79:16-79:22, 80:22-81:5, 81:19-82:2, 81:19-83:10, 81:19-82:2, 83:18-22, 83:23-
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`84:5, 84:9-13, 84:14-20, 84:21-85:5, 85:7-18, 88:7-89:5, 89:6-90:6, 90:25-91:17,
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`91:20-92:1, 92:13-93:1, 105:21-106:10, 106:15-106:23, 108:5-108:10, 110:4-
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`110:14; and Patrick Tr. 29:11-15, 30:10-31:20, 34:13-35:25, 40:3-41:12, 42:14-24;
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`43:1-16, 44:4-45:10, 46:21-47:19, 50:11-23, 51:1-52:25, 53:1-5, 53:13-24, 54:9-15,
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`54:16-57:15, 57:17-58:4, 58:5-60:25, 61:22-62:1, 61:2-6, 66:10-20, 71:10-12,
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`71:19-72:1.
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`Ca se No. 2:21-cv-04848-PA-KS
`PLAINTIFF’S MOTION IN LIMINE NO. 1
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`Case 2:21-cv-04848-SSS-KS Document 159 Filed 06/17/22 Page 3 of 88 Page ID #:6002
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`This motion is based on this notice; the memorandum of points and
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`authorities; the declaration of Dylan C. Bonfigli; all pleadings, records, and papers
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`on file in this action; such other matters of which this Court may take judicial
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`notice; and upon such other evidence and oral argument as may be considered by the
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`Court before or at the hearing on this application.
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`This motion is made following a conference of counsel pursuant to Local
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`Rule 7-3 and Section II.B of this Court’s Civil Trial Scheduling Order (ECF No.
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`52), which took place on May 20, 2022.
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`QUINN EMANUEL URQUHART
`& SULLIVAN, LLP
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`By /s/ Robert M. Schwartz
`Alex Spiro (pro hac vice)
`Robert M. Schwartz
`Cory D. Struble
`Dylan C. Bonfigli
`Attorneys for Plaintiff
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`DATED: June 17, 2022
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`-2-
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`Ca se No. 2:21-cv-04848-PA-KS
`PLAINTIFF’S MOTION IN LIMINE NO. 1
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`Case 2:21-cv-04848-SSS-KS Document 159 Filed 06/17/22 Page 4 of 88 Page ID #:6003
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`I.
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`II.
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`TABLE OF CONTENTS
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`Page
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`PRELIMINARY STATEMENT .............................................................. 1
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`THE COURT SHOULD EXCLUDE EVIDENCE AND ARGUMENT
`REGARDING DEFENDANTS’ CLAIM TO COPYRIGHT IN THE
`PHOTOS OF THE PLAINTIFF .............................................................. 1
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`III. CONCLUSION ..................................................................................... 4
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`DEFENDANTS’ OPPOSITION ....................................................................... 5
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`I.
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`II.
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`INTRODUCTION ................................................................................. 5
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`RELEVANT BACKGROUND ............................................................... 5
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`A. Defendants’ Photographs of Plaintiff ............................................... 5
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`B. Apartment 4B .............................................................................. 6
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`C.
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`D.
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`The Pre-Litigation Negotiation ....................................................... 7
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`This Lawsuit ................................................................................ 8
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`E. Discovery Concerning Island Def Jam ............................................. 9
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`III. THIS MOTION VIOLATES THE FOUR-MOTION LIMIT ..................... 10
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`IV. LICENSING AND APARTMENT 4B ARE RELEVANT ........................ 10
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`V.
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`EVIDENCE OF DEFENDANTS’ COPYRIGHTS IS NEEDED ................ 11
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`VI. CONCLUSION ................................................................................... 12
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`PLAINTIFF’S REPLY .................................................................................. 13
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`A.
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`Plaintiff’s motion does not violate the four-motion limit. ................. 13
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`B. Defendants licensing of copyrights does not show consent. .............. 14
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`Plaintiff did not place copyright licensing at issue. .......................... 14
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`D. Defendants’ “laches” argument is moot. ........................................ 15
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`E.
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`Plaintiff will present evidence of copyright ownership only to
`rebut Defendants’ assertions of copyright ownership. ...................... 15
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`CONCLUSION ............................................................................................ 16
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`DECLARATION OF DYLAN C. BONFIGLI .................................................. 17
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`ATTESTATION STATEMENT ..................................................................... 20
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`-i-
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`Ca se No. 2:21-cv-04848-PA-KS
`PLAINTIFF’S MOTION IN LIMINE NO. 1
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`Case 2:21-cv-04848-SSS-KS Document 159 Filed 06/17/22 Page 5 of 88 Page ID #:6004
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`TABLE OF AUTHORITIES
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`Page
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`CASES
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`Danjaq LLC v. Sony Corp.,
`263 F.3d 942 (9th Cir. 2001) ................................................................. 11
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`Downing v. Abercrombie & Fitch,
`265 F.3d 994 (9th Cir. 2001) ................................................................. 10
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`Galindo v Tassio,
`2014 WL 12693525 (N.D. Cal. June 19, 2014) ..........................................2
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`In re NCAA Student-Athlete Name & Likeness Licensing Litig.,
`990 F. Supp. 2d 996 (N.D. Cal. 2013)................................................. 1, 14
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`Jones v. Corbis Corp.,
`815 F. Supp. 2d 1108 (C.D. Cal. 2011) ................................................... 10
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`Muirbrook v Skechers USA Inc.,
`CV 12-8762 GAF PLAX, 2012 WL 5456402 (C.D. Cal. Nov. 6, 2012) ........1
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`-ii-
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`Ca se No. 2:21-cv-04848-PA-KS
`PLAINTIFF’S MOTION IN LIMINE NO. 1
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`Case 2:21-cv-04848-SSS-KS Document 159 Filed 06/17/22 Page 6 of 88 Page ID #:6005
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`I.
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`PRELIMINARY STATEMENT
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`Plaintiff Shawn Carter, p/k/a Jay-Z, moves to exclude any argument,
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`testimony, or evidence regarding Defendants’ claim that Defendant Mannion is the
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`owner of the copyright in photos of Jay-Z, including any assertions that Defendants
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`granted copyright licenses to Plaintiff or nonparties. The question of whether
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`Defendant Mannion owns any interest in the copyright to any photograph, and any
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`issues related to any such copyright interest, are not relevant to any claim or defense
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`in this right-of-publicity case. Evidence regarding copyright ownership and
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`licensing will serve only to confuse the fact-finder and prejudice Plaintiff.
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`Such evidence would also require a distracting and prejudicial trial-within-a-
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`trial regarding whether Mannion actually owns any copyrights, as he cannot satisfy
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`his burden of proving he does and Defendants’ evidence establishes a pattern and
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`practice of transferring copyright to Plaintiff’s former record label, Def Jam.
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`II. THE COURT SHOULD EXCLUDE EVIDENCE AND ARGUMENT
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`REGARDING DEFENDANTS’ CLAIM TO COPYRIGHT IN THE
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`PHOTOS OF THE PLAINTIFF
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`This is a right-of-publicity case alleging statutory and common law claims of
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`misappropriation of Jay-Z’s name, image, and likeness (“NIL”). There are no
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`claims for copyright infringement. Whether Mannion, Jay-Z, or Jay-Z’s record label
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`own the copyrights in the photos at issue has no bearing on whether Mannion
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`violated Jay-Z’s right of publicity. “[T]he rights [of publicity] [Jay-Z] seek[s] to
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`assert in the present case are fundamentally different from those protected by the
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`Copyright Act.” In re NCAA Student-Athlete Name & Likeness Licensing Litig., 990
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`F. Supp. 2d 996, 1008 (N.D. Cal. 2013); Muirbrook v Skechers USA Inc., CV 12-
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`8762 GAF PLAX, 2012 WL 5456402, at *1 (C.D. Cal. Nov. 6, 2012) (“The issue
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`here is not ownership of the photographs—Plaintiff claims none—or Defendants’
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`alleged use of any copyrighted material owned by Plaintiff. Rather, this lawsuit
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`focuses on the misappropriation of Plaintiff’s right of publicity and control over the
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`Ca se No. 2:21-cv-04848-PA-KS
`PLAINTIFF’S MOTION IN LIMINE NO. 1
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`Case 2:21-cv-04848-SSS-KS Document 159 Filed 06/17/22 Page 7 of 88 Page ID #:6006
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`use of his likeness.”). Indeed, Defendants themselves initially sought to exclude
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`evidence pertaining to copyright ownership, contending that copyright is “a different
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`right entirely” from the right of publicity, and that “[t]here is a significant risk that
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`the jury would confuse” the two. (Bonfigli Dec. Ex. B at 4.)
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`Allowing evidence of copyright ownership will risk confusing issues and will
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`prejudice Plaintiff. The factfinder could be misled into believing that ownership of
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`copyright carries legal significance when it does not. The pertinent inquiry is
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`whether Mannion used Jay-Z’s NIL without his permission. The copyright status of
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`the photos at issue plays no role in that analysis.
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`Were Mannion allowed to introduce evidence that he was the copyright
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`owner, that evidence would necessarily be subject to rebuttal evidence
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`demonstrating that he is not. For instance, the record is clear that Mannion and Jay-
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`Z’s record label, Def Jam, had a pattern and practice of entering into a standard
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`template agreement whereby Mannion agreed that all copyrights in promotional
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`photos taken of Jay-Z belonged to Def Jam. (E.g., Bonfigli Dec. Exs. F at 2.) Def
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`Jam’s lawyer at the time testified that, as a matter of routine practice, photography
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`agreements were not subject to negotiation and that it would have been “a poorly
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`received anomaly” if Def Jam had hired Mannion without having the standard
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`agreement in place. (Kempler Tr. [Bonfigli Dec. Ex. C] 101:9-14.) Allowing
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`irrelevant evidence concerning copyright will therefore necessarily requ ire “a mini
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`trial within a trial” that “risks confusion of the issues, misleading the jury, and waste
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`of time.” Galindo v Tassio, 2014 WL 12693525, at *2 (N.D. Cal. June 19, 2014).
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`This motion also encompasses any evidence that Mannion purported to grant
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`licenses to copyrights in photos of Jay-Z to nonparties or Jay-Z or his companies.
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`Whether Mannion did so is similarly irrelevant to the issues in dispute for the
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`reasons stated above, and as Plaintiff has made clear to Defendants, he does not seek
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`redress for such licensing of copyrights. ECF No. 94 at 26 n.5 (“Jay-Z does not
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`seek to prevent Mannion from licensing the copyrights to any photos.”).
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`Ca se No. 2:21-cv-04848-PA-KS
`PLAINTIFF’S MOTION IN LIMINE NO. 1
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`Case 2:21-cv-04848-SSS-KS Document 159 Filed 06/17/22 Page 8 of 88 Page ID #:6007
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`Evidence of Mannion’s copyright licensing includes not only the license
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`agreements themselves but any evidence pertaining to, for example, Mannion’s
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`licensing of copyrights to Kareem Burke. That Burke used the Jay-Z photos in
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`connection with an event (called “Apartment 4B”) to celebrate the 25th anniversary
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`of the Reasonable Doubt album’s release does not bear on the statute of limitations.
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`Burke’s uses of Jay-Z’s NIL, in the absence of a license from Mannion to use Jay-
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`Z’s NIL, is not probative of whether Jay-Z knew Mannion was exploiting Jay-Z’s
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`NIL. In fact, it proves the opposite.
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` Moreover, the record is clear that
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`Jay Z did not object to Burke—a Jay-Z friend and at times business partner—
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`making limited use of his NIL in connection with the 25th anniversary celebration of
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`Reasonable Doubt. (Perez Tr. [Bonfigli Dec. Ex. D] 122:13-23 (“Jay definitely
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`approved for [Burke] to do whatever [he] was doing,” including “the Apartment 4B
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`show”)].)
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`Nor do any other licenses support Mannion’s statute of limitations defense.
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` So, to the
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`extent Plaintiff had access to these agreements, nothing about them would have put
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`Case 2:21-cv-04848-SSS-KS Document 159 Filed 06/17/22 Page 9 of 88 Page ID #:6008
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`Plaintiff on notice that Mannion was exploiting his NIL. Similarly, to the extent
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`Mannion granted copyright licenses to Jay-Z or his companies, that too is irrelevant
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`to the statute of limitations because Mannion cannot explain why that activity would
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`put Jay-Z on notice that Mannion was exploiting his NIL in sales of prints and
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`merchandise.
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`III. CONCLUSION
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`The Court should exclude any argument, testimony, or evidence regarding
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`Defendants’ claim that Defendant Mannion is the owner of the copyright in photos
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`of Jay-Z, including any assertions that Defendants granted copyright licenses to
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`Plaintiff or nonparties.
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`Ca se No. 2:21-cv-04848-PA-KS
`PLAINTIFF’S MOTION IN LIMINE NO. 1
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`Case 2:21-cv-04848-SSS-KS Document 159 Filed 06/17/22 Page 10 of 88 Page ID #:6009
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`DEFENDANTS’ OPPOSITION
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`I.
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`INTRODUCTION
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`Plaintiff’s Motion in Limine No. 1 should be denied in its entirety. As an
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`initial matter, Plaintiff has ignored the Civil Trial Scheduling Order’s limitation of
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`four motions in limine per side. Plaintiff is filing three other motions in limine. And
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`with this Motion, he is shoehorning three distinct categories of evidence—(1)
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`Defendants’ ownership of the copyrights in the photographs at issue (“Disputed
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`Photos”); (2) Defendants’ licensing of the Disputed Photos to Plaintiff, his related
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`companies, and third parties; and (3) the Apartment 4B event—into Plaintiff’s
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`fourth and final motion in limine.s
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`In any case, those three categories are highly relevant to the lack-of-consent
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`element of Plaintiff’s claims, to Defendants’ laches defense, and to rebut Plaintiff’s
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`contention that he owns the copyrights. Critically, Plaintiff’s counsel recently
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`confirmed that he seeks damages from Defendants’ licensing activity:
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`We are seeking the following relief: . . .
`2. Damages in the form of: (a) Defendants’ revenues from
`any uses of Plaintiff’s NIL, including revenues Defendants’
`received from licensing third parties the right to make any
`uses of any photograph in which Plaintiff’s NIL is visible[.]
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`Miyake Decl. Ex. A (Plaintiff’s counsel’s June 2, 2022 email) (emphasis added). He
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`cannot argue that licensing, which he put directly at issue, is prejudicial.
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`Accordingly, this Motion should be denied.
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`II. RELEVANT BACKGROUND
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`A. Defendants’ Photographs of Plaintiff
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`In 1996, Plaintiff, Kareem Burke, and Damon Dash co-founded Roc-a-fella
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`Records. Miyake Decl. Ex. B (“Burke Dep. Tr.”) at 29:12-30:12. That year, Roc-a-
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`fella Records released Plaintiff’s debut album, Reasonable Doubt. Id. at 32:8-14;
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`First Am. Compl. (ECF 15) ¶ 12. Defendant Jonathan Mannion was the
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`photographer at the Reasonable Doubt photoshoot, where he created photographs
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`PLAINTIFF’S MOTION IN LIMINE NO. 1
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`Case 2:21-cv-04848-SSS-KS Document 159 Filed 06/17/22 Page 11 of 88 Page ID #:6010
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`that would be used for the album. Miyake Decl. Ex. C (“Carter Dep. Tr.”) at 87:1-
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`21. The Disputed Photos include three images from the Reasonable Doubt
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`photoshoot. Mannion Decl. in Supp. of Defs.’ Mot. in Limine (June 3, 2022) ¶¶ 3-9.
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`Over the years, Mr. Mannion created more photographs of Plaintiff, some of which
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`were used for Plaintiff’s other albums. First Am. Compl. ¶ 21.
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`Since 2006, Defendants have openly licensed Mr. Mannion’s photographs of
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`Plaintiff to others for a fee. For example, on three occasions from 2006 to 2009,
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`Plaintiff and S. Carter Enterprises, a company that handles Plaintiff’s personal
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`affairs, separately licensed or sought a license for some of the Disputed Photos from
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`Defendants. See Carter Dep. Tr. at 147:24-149:15; Miyake Decl. Ex. H; Miyake
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`Decl. Ex. D (“Perez Dep. Tr.”) at 22:18-25; Mannion Decl. in Supp. Resp. to Pl.’s
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`Mot. in Limine (June 10, 2022) Ex. B. Companies affiliated with Plaintiff—such as
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`Plaintiff’s music and management company, Roc Nation—have also licensed or
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`sought licenses from Defendants. Mannion Decl. in Supp. Resp. to Pl.’s Mot. in
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`Limine (June 10, 2022) Ex. C.
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`B. Apartment 4B
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`In 2016, Mr. Burke hosted a “pop-up” event at a Los Angeles venue called
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`Apartment 4B to celebrate the 20th anniversary of Reasonable Doubt. Burke Dep.
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`Tr. 87:21-88:5, 96:11-99:10, 109:18-21. He obtained from Defendants prints of
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`photographs from the Reasonable Doubt photoshoot, including several of the
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`Disputed Photos, to display at the event. Id. at 108:14-109:17, 110:2-14, 125:23-
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`126:20, 129:1-130:11, Ex. 11; Carter Dep. Tr. 209:19-210:10. Shirts featuring
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`photographs from the Reasonable Doubt photoshoot, which Mr. Burke licensed
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`from Defendants, were sold at the event. Burke Dep. Tr. 96:25-97:21, 131:11-
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`132:24.
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`Plaintiff attended the Apartment 4B event for one to two hours. Id. at 113:5-
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`13. He never objected to the prints on display that included some of the Disputed
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`Photos or to the sale of shirts with photographs licensed from Defendants. Id. at
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`Case 2:21-cv-04848-SSS-KS Document 159 Filed 06/17/22 Page 12 of 88 Page ID #:6011
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`113:21-25, 115:4-18; Carter Dep. Tr. 209:19-211:3, Miyake Decl. Ex. J. In fact,
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`Plaintiff saw Mr. Burke wearing one of the shirts and did not object to that use of
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`Defendants’ photograph. Burke Dep. Tr. 117:3-118:4; Carter Dep. Tr. 208:12-209:7;
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`Miyake Decl. Ex. I.1 The reason was that Plaintiff’s “thinking of this was Mr.
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`Mannion was -- had the negatives and was creating images and maybe getting paid.
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`[Plaintiff] didn’t -- [he] would have no reason to send [Mr. Mannion] anything to
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`say stop doing anything.” Carter Dep. Tr. 209:8-16 (emphasis added).
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`In November 2018, Mr. Mannion and Circle of Success, LLC, a different
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`company of Mr. Burke, entered a Confidential Settlement and License Agreement.
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`Bonfigli Decl. Ex. I. This agreement was entered over two years after the Apartment
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`4B event and has nothing to do with that event. See id. In the agreement, however,
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`Mr. Mannion licensed several of the Disputed Photos to Mr. Burke to use on
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`clothing. Id. Ex. I ¶ 3.a. & Sched. A. Plaintiff obtained a copy of the agreement and
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`objected to Mr. Burke’s use of irrelevant photographs, but not to the use of the
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`Disputed Photos, and Plaintiff never made an objection to Defendants. See Miyake
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`Decl. Ex. O; Perez Dep. Tr. 68:17-70:3.
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`C. The Pre-Litigation Negotiation
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`On May 17, 2021, before this action was filed, Plaintiff’s lawyer Ryan
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`Klarberg of Pryor Cashman LLP reached out to Defendants to discuss Plaintiff’s
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`interest in another “potential licensing arrangement” with Defendants. Miyake Decl.
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`Ex. K; id. Ex. E (Davidov Dep. Tr.) at 116:20-117:11. Defendants’ licensing agent,
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`Uri Davidov, and Mr. Klarberg negotiated options for Plaintiff to license
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`photographs of Plaintiff from Defendants for five years. Id. Ex. K.
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`1 Exhibits I and J of the Miyake Declaration are screenshots from Joint Exhibit 10, a
`video that Fourth of November, one of Mr. Burke’s companies, put together about
`the Apartment 4B event. Burke Dep. Tr. 104:11-105:4, 106:7-108:6.
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`Case 2:21-cv-04848-SSS-KS Document 159 Filed 06/17/22 Page 13 of 88 Page ID #:6012
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`Plaintiff later wanted, instead, to purchase the photographs, and negotiations
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`continued into mid-June 2021. On June 13, 2021, Brad Rose of Pryor Cashman LLP
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`emailed Defendants’ representatives because he believed the parties reached a deal
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`for Defendants to sell to Plaintiff the entire Reasonable Doubt portfolio. See Perez
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`Dep. Tr. at 225:2-226:1, Ex. 49. But the parties actually disagreed as to what
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`photographs would be sold and the price. Miyake Decl. Ex. G at 1-3; id. Ex. F
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`(Santiago Dep. Tr.) at 176:21-186:17. When Defendants refused Plaintiff’s terms,
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`Plaintiff concocted this lawsuit and filed it on June 15, 2021. See id. Ex. G at 4-5.
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`D. This Lawsuit
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`Plaintiff contends that he became aware that Defendants were using his name,
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`image, or likeness no earlier than May 2021. Miyake Decl. Ex. N at 8-10
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`(interrogatory nos. 7-11). His right-of-publicity claims concern the Disputed Photos:
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`(1) the “Got You All in Check” photograph (1995); (2) the Reasonable Doubt cover
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`photograph (1996); (3) the “Beyond a Reasonable Doubt” photograph (1996), also
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`from the Reasonable Doubt photoshoot; (4) the Reasonable doubt slipmat photo
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`(1996), also from the Reasonable Doubt photoshoot; (5) the “Chess Not Checkers”
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`photograph (1998); (6) the “New Blue Yankee” photograph (1998); (7) the “Last
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`Laugh” photograph (2002); and (8) the “Fame Wall” photograph (2021).
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`Mannion Decl. in Supp. of Defs.’ Mot. in Limine (June 3, 2022) ¶¶ 3-9.
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`Plaintiff’s purpose in filing this lawsuit is “[t]o make a clear record that [he]
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`own[s] the images.” Carter Dep. Tr. 213:14-215:15. As Plaintiff explains:
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`I created this -- these works, this imaging, the music, the
`lyrics. . . .
`How could [Mr. Mannion] own these images? He didn’t
`even understand why these things came to be. . . .
`He couldn’t explain them to you, but he’ll make -- he’ll
`make claims that -- you know, that these images are his? . . .
`I want the record to show that I own these photographs
`because I do.
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`Case 2:21-cv-04848-SSS-KS Document 159 Filed 06/17/22 Page 14 of 88 Page ID #:6013
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`Id. Despite conceding that no written contract applies to photographs from the
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`Reasonable Doubt photoshoot (id. at 99:8-23) and failing to produce in discovery
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`any contract that applies to any of the Disputed Photos, Plaintiff’s representatives
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`contend that Mr. Mannion created the photographs under a “work for hire”
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`arrangement (Perez Dep. Tr. 81:11-83:21).
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`The relief that Plaintiff seeks include (1) a permanent injunction barring
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`Defendants from any uses of any photo including Plaintiff’s name, image, or
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`likeness, without Plaintiff’s permission; (2) damages from Defendants’ profits
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`generated from any uses of the Disputed Photographs, including licenses of the
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`copyrights to third parties; and (3) damages based on a hypothetical license fee that
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`Plaintiff contends Defendants would have had to pay to use his name or likeness.
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`See Miyake Decl. Ex. A.
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`E. Discovery Concerning Island Def Jam
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`Six photography agreements between Defendants and Island Def Jam (“IDJ
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`Agreements”) were produced in this lawsuit. See Mannion Decl. in Supp. of Defs.’
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`Mot. in Limine (June 3, 2022) Exs. A-F. None of the IDJ Agreements apply to the
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`Disputed Photos. Id. ¶¶ 11-16. No other photography agreement with Island Def
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`Jam has been located and produced in discovery.
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`Jeffrey Kempler was an attorney at Island Def Jam from 2000 to 2004
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`(Miyake Decl. Ex. L (“Kempler Dep. Tr.”) at 23:22-24:3), overlapping with none of
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`the Disputed Photos except for the “Last Laugh” photograph. At deposition, Mr.
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`Kempler testified that he did not recall the IDJ Agreements at all, much less what
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`photographs or photoshoots the IDJ Agreements applied to. Kempler Dep. Tr.
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`57:14-25, 63:23-64:9, 70:25-72:16, 78:9-20, 80:22-81:5, 83:23-84:5, 84:21-85:6. He
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`also did not know whether additional contracts between Defendants and Island Def
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`Jam ever existed. Id. at 84:21-85:6, 88:7-16. Mr. Kempler made clear that that he
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`“generally ha[s] a lack of recollection about the dealings between Island Def Jam
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`and Jonathan Mannion when it comes to photography agreements.” Id. at 88:7-16.
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`Case 2:21-cv-04848-SSS-KS Document 159 Filed 06/17/22 Page 15 of 88 Page ID #:6014
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`III. THIS MOTION VIOLATES THE FOUR-MOTION LIMIT
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`The Motion violates Section II.B.2. of the Civil Trial Scheduling Order,
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`which limits each party to four motions in limine. Plaintiff is separately filing three
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`other motions in limine. This Motion, however, is actually three additional motions,
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`covering (1) Defendants’ copyrights in the Disputed Photos; (2) Defendants’
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`licensing the photographs to Plaintiff, his related companies, and third parties; and
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`(3) the Apartment 4B event. Plaintiff should not be permitted to skirt the four-
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`motion limit by shoehorning three distinct categories into a single motion in limine.
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`IV. LICENSING AND APARTMENT 4B ARE RELEVANT
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`Evidence regarding Defendants’ licensing of the Disputed Photos and the
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`Apartment 4B event are relevant to various issues in this lawsuit.
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`1.
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`Plaintiff Has Put Licensing Directly at Issue
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`There is no dispute that Defendants’ licensing of the Disputed Photos is
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`relevant to Plaintiff’s request for damages from Defendants’ licensing revenue. See
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`Miyake Decl. Ex. A. Having put licensing directly at issue, Plaintiff cannot now
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`contend that the subject would confuse the jury or prejudice him.
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`2.
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`Lack of Consent
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`Additionally, Defendants’ licensing activity and the Apartment 4B event are
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`relevant to the lack-of-consent element of Plaintiff’s right-of-publicity claims. See
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`Downing v. Abercrombie & Fitch, 265 F.3d 994, 1001 (9th Cir. 2001) (explaining
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`that common law and Cal. Civ. Code § 3344 right-of-publicity claims require
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`proving lack of consent). “Consent to use a name or likeness need not be express or
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`in writing, but it may be implied from the consenting party’s conduct and the
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`circumstances of the case.” Jones v. Corbis Corp., 815 F. Supp. 2d 1108, 1113
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`(C.D. Cal. 2011), aff’d, 489 F. App’x 155 (9th Cir. 2012) (finding decades of
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`nonobjection constituted implied consent).
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`Here, Defendants’ licensing activity and the Apartment 4B event make
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`Plaintiff’s implied consent to the uses of the Disputed Photos even more apparent.
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`Case 2:21-cv-04848-SSS-KS Document 159 Filed 06/17/22 Page 16 of 88 Page ID #:6015
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`For at least 25 years, Defendants openly exploited the Disputed Photos, and Plaintiff
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`has had to seek licenses from Defendants to use the images for his purposes. The
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`pre-litigation negotiation in May and June 20021 is a continuation of Plaintiff’s
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`acknowledgment that Defendants did not need his permission to use the Disputed
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`Photos. Indeed, had Plaintiff actually objected to Defendants’ uses of the Disputed
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`Photographs, the pre-litigation negotiation would certainly have proceeded
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`differently, as Plaintiff contends he learned about Defendants’ uses in May 2021.
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`But he never sent a cease-and-desist letter or otherwise discussed his then-unfiled
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`claims while the parties were working on a business deal.
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`Similarly, while at the Apartment 4B event in 2016, Plaintiff saw but did not
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`object to prints and shirts featuring Defendants’ photographs of him. Nor did
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`Plaintiff object to the uses in the Circle of Success agreement. It is only through this
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`lawsuit that Plaintiff did an about-face and claim that those uses caused him harm.
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`But Plaintiff’s many years of not objecting, and of affirmatively licensing from
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`Defendants, show that he cannot prove the lack-of-consent element of his claims.
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`3.
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`Laches
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`Defendants’ copyrights and licensing activity and the Apartment 4B event are
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`also relevant to Defendants’ laches defense. This defense requires showing (a) an
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`unreasonable delay by Plaintiff and (b) prejudice to Defendants. Danjaq LLC v.
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`Sony Corp., 263 F.3d 942, 951 (9th Cir. 2001). As with lack of consent, Defendants’
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`retaining the right to exploit the Disputed Photos and Plaintiff’s knowledge but
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`failure to object to the uses for many years establish the first element of laches.
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`V. EVIDENCE OF DEFENDANTS’ COPYRIGHTS IS NEEDED
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`To bolster his case, Plaintiff contends that he owns the Disputed Photos
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`simply because they relate to his music. See Carter Dep. Tr. 213:14-215:15 (“I
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`created this -- these works, this imaging, the music, the lyrics. . . . I want the record
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`to show that I own these photographs because I do.”) Defendants should be
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