CERTIFICATE OF EXPRESS MAILING
`
`I hereby certify that this document is being deposited with the United States
`Postal Service as “EXPRESS MAIL POST OFFICE TO ADDRESSEE"
`service in an envelope addressed to: Commissioner For Trademarks, Box TTAB
`No Fee, 900 Crystal Drive. Arlington, Virginia 22202-35 I 3 on the date shown
`below: Express Mail Label No. EL|59l78037US
`
`Name: J. Christopher 1‘
`
` Signature:
`
`Date: November 13. 2003
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 761401734
`Published in the Official Gazette on October 29, 2002
`
` ll|llllll|l
`
`ACTION SOFTWARE, INC.,
`
`1 1-13-2003
`_,_S_ ,,_,_,,,, ,,,°,,,m M|11fi,oD1Dl. m
`
`Opposer,
`
`V.
`
`Opposition No. 91154431
`
`RIGHT ASCENSION, INC.,
`
`Mark: ADE
`
`Applicant.
`
`APPLICANT RIGHT ASCENSION, INC.’S BRIEF IN OPPOSITION TO
`
`
`Commissioner for Trademarks
`Box TTAB No Fee
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`NOW COMES the Applicant, Right Ascension, Inc. (“Applicant”), by its undersigned
`
`counsel, and, with this Brief, contests and urges this Trademark Trial and Appeal Board (the
`
`‘‘Board’’) to deny the Motion to Suspend Proceedings Pending Outcome of Civil Action that has
`
`

`
`
`
`been filed by Opposer, Action Software, Inc. (“Opposer”). While there are several reasons for
`
`Applicant’s opposition to the Motion to Suspend Proceedings, each of which is discussed more
`
`fully herein, the essential basis for denying Opposer’s Motion is that the pending civil litigation
`
`between the parties is not likely to dispose of the issues that are to be determined by the Board
`
`regarding the registration of Applicant’s mark.
`
`1. Opposer has provided no basis for opposing Applieanfls registration or for suspending
`the Board’s Proceedings in this matter.
`
`In its Notice of Opposition, Opposer failed to state how, or to give any reason why, it
`
`would be damaged by the registration of Applicant’s mark. Opposer has not complied, therefore,
`
`with a threshold requirement of this Board and the United States Patent and Trademark Office
`
`for opposing the registration, and the Opposition should be dismissed. Under such
`
`circumstances, Opposer certainly should not be permitted to stall Applicant’s registration effort
`
`any further.
`
`Instead, these proceedings should advance as currently scheduled.‘
`
`Similarly, Opposer has failed to provide in its Motion to Suspend any specific basis for
`
`delaying these proceedings. Opposer merely argues that the civil case pending at
`
`01-CV-0666 in the U. S. District Court for the Western District of Pennsylvania “will likely be
`
`dispositive of the issues before this Court.” As noted below, Right Ascension believes that
`
`argument to be incorrect, and that the civil litigation is not likely to resolve any issues to be
`
`considered by this Board or the Patent and Trademark Office. To assist the Board in weighing
`
`the argument raised in Opp0Ser’s Motion, Right Ascension has attached to this Brief as Exhibit 1
`
`a copy of its Memorandum in Opposition to Defendants’ Motion for Summary Judgment that
`
`was tiled in the civil litigation, together with portions of material relevant to these proceedings
`
`that was included as exhibits to said Memorandum?
`
`' As of this date, the scheduled periods for discovery and plaintiff/0pposer’s testimony already have closed, and
`Opposer has not submitted a separate motion to extend the pretrial deadlines.
`2 Due to its voluminous nature — approximately four inches in thickness — and the inclusion of materials filed under
`seal, Right Ascension has not included with Exhibit “1” hereto all ofthe material that was attached to and filed with
`
`

`
`
`
`Opposer has not cited any specific support for its contention that the pending motion in
`
`federal court will resolve the trademark opposition. The case law and other support cited in
`
`Opposer’s Motion to Suspend generally concern this Board’s authority and power to suspend
`
`proceedings and, so, are not specifically addressed in this Brief.3
`
`2. The issues in this proceeding are not the same as those in the civil litigation.
`
`An examination of the claims and defenses in the civil litigation involving these parties
`
`shows that, contrary to 0pposer’s argument, the issues to be resolved by the District Court and
`
`the issues to be resolved in this Opposition proceeding are not the same.
`
`(See the Amended and
`
`Supplemental Complaint, attached as an exhibit to Opposer’s Motion to Suspend, and Exhibit
`
`“I ” hereto). Of primary significance is that the relevant time period for the arguments and
`
`defenses in the civil litigation — late 2000 to early 2001 —» is not the same time period that
`
`concerns the current registration application. In the approximately three years that have passed
`
`since the events that gave rise to the lawsuit, Applicant has continued to use ADE mark in
`
`connection with the offer and sale of its services and products. Thus, any finding by the District
`
`Court regarding the nature and use of the ADE mark during the time period relevant to that
`
`lawsuit should not control the decisions of this Board or, ultimately, the Patent and Trademark
`
`Office.
`
`As can be seen by a review of the documents from the civil case that now have been
`
`submitted to this Board by the parties, the trademark-related issues in the civil litigation are
`
`entirely based upon Opposer having copied materials wholesale from Applicant’s web site in the
`
`form of digital files, some of which contained Applicant’s ADE mark. Opposer then placed
`
`
`
`Instead, only Exhibit “D” of the
`the Memorandum in Opposition to Defendants’ Motion for Summary Judgment.
`Memorandum (Declaration of Mike Barry) and sub—exhibit “F” thereto have been included in Exhibit “l” hereto.
`Upon request, Right Ascension will provide to the Board additional material that was filed as exhibits to the
`Memorandum in Opposition to Defendants’ Motion for Summary Judgment.
`
`3 Those sections of Opposer’s Motion, including the citations listed therein, appear to have been taken directly from
`the Trademark Trial and Appeal Board Manual of Procedure, § 5 l0.02.
`
`3
`
`

`
`
`
`Z3
`
`these materials on its own web site, with little or no alteration, in order to benefit commercially
`
`from not having to prepare or obtain such materials by its own expense and efforts.
`
`Opposer’s defense of the trademark infringement claims in the civil litigation, as well as
`
`in these proceedings, consists of nothing more than spurious attempts to deflect attention from
`
`the fact that it copied and used materials from Applicant’s web site, some of which still
`
`contained Applicant’s ADE service mark when placed by Opposer on its web site.
`
`(See, e.g.,
`
`Exhibit “D”, sub-exhibit “F", of the Memorandum in Opposition to Defendants’ Motion for
`
`Summary Judgment, attached as part of Exhibit “1” hereto). There is no claim by Opposer in the
`
`civil litigation or in these proceedings that it created the ADE mark or a similar mark, that it is
`
`entitled to use the ADE mark, that it wants to use the ADE mark, or that the registration of the
`
`mark by Applicant will harm Opposer in any way.
`
`Instead, Opposer has focused only upon Applicant’s use of its mark on certain product
`
`images that appeared on its adultdvdempirecom web site, and then has argued that by placing its
`
`mark on such images Right Ascension was attempting to claim creative ownership of such
`
`products. Right Ascension has made no such claims, however, and has denied the otherwise
`
`unsupported allegations by Opposer. It is readily apparent that Right Ascension merely was the
`
`on-line retailer of various products made by others, namely, third party movie studios. It also is
`
`undisputed that Applicant used and uses the mark in other ways.
`
`3. The pending civil litigation will not dispose of the issues to be determined by these
`proceedings.
`
`As noted above, while Opposer may be able to point to the presence of the same issues in
`
`the civil litigation that it has asserted in its Notice of Opposition, the issues apply to very
`
`different facts, circumstances and claims. As a result, the pending civil litigation, which will
`
`determine whether Opposer is liable for, inter alia, trademark infringement, will not determine
`
`whether or not Applicant’s mark can be registered at this time.
`
`

`
`
`
`Moreover, Opposer’s Motion to Suspend implies that a ruling is imminent on its
`
`summary judgment motion filed in the civil litigation, when, in fact, that is not likely to be the
`
`case. As a more accurate indication of the time within which the parties realistically can expect
`
`to conclude their civil litigation, a motion to dismiss filed by other defendants in the civil
`
`litigation remains pending after more than a year. Also, Right Ascension has established that a
`
`myriad of factual issues exist that, it believes, preclude any adverse summary disposition of its
`
`claims under 15 U.S.C. §1125(a) and (c) and its common law claims related to the ADE mark.
`
`A suspension of the opposition proceedings at this point would only serve to delay
`
`indefinitely the registration process and the benefits of trademark registration to which Right
`
`Ascension otherwise is entitled. On the other hand, allowing the process to continue as
`
`scheduled and, even, the successful registration of the mark by Applicant will not affect the
`
`course or outcome of the civil litigation.
`
`ln summary, Opposer’s motion to suspend these proceedings should be denied
`
`because (a) Opposer has not sufficiently alleged any harm or damage that it might incur
`
`from the registration of Applicant’s mark; (b) Opposer has not sufficiently identified how
`
`the resolution of issues in the civil litigation will resolve the issues in these proceedings;
`
`(c) the issues in the civil litigation are not the same as the issues in this Opposition proceeding;
`
`and (d) the pending civil litigation will not dispose of or have a bearing upon the issues to be
`
`determined by these proceedings.
`
`WHEREFORE, the Applicant, Right Ascension, lnc., contests the Motion to Suspend
`
`Proceedings filed by Opposer, Action Software, lnc., and respectfully requests that the Board
`
`deny said Motion and move forward with the proceedings as scheduled.
`
`

`
`
`
`Dated: November 13, 2003
`
`STONECIPHER, CUNNINGHAM,
`BEARD & SCHMITT, P.C.
`
`
`6: A
`5—FI'4 Avenue
`
`Pittsburgh, PA 15222
`(412) 391-8510
`
`Counsel for Applicant
`Right Ascension, Inc.
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies he served a true and correct copy of the foregoing, by
`
`United States Express Mail, first class service, upon the following counsel of record for Opposer
`
`Action Software, Inc., this 13”‘ day of November, 2003:
`
`Steven M. Auvil, Esq.
`Benesch, Friedlander, Coplan & Aronoff, LLP
`2300 BP Tower
`
`200 Public Square
`Cleveland, OH 44114-2378
`
`
`
`

`
`

`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
`
`RIGHT ASCENSION, INC,
`
`Civil Action No. 01 —CV-0666
`
`t/d/b/a DVDEMPIRECOM,
`
`Plaintiff,
`
`Judge William L. Standish
`
`ACTION-DVD.COM, INC., ACTION
`SOFTWARE, INC., WEBIMAGE2000,
`INC.,ALEXANDERBELFER, and OLEG
`MINKO,
`-
`
`r;f—?;~.
`it
`p
`
`i?
`
`l'-
`
`'
`
`‘:3’
`
`Defendants.
`
`PLAINTIFF’S MEMORANDUM IN OPPOSITION TO
`DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT
`
`NOW COMES Plaintiff Right Ascension‘, Inc. (“Right Ascension”), and submits this
`
`Memorandum in Opposition to the Motion for Summary Judgment and Memorandum in
`
`Support thereof filed on behalf of Defendants Action Software, Inc., Action - DVD.cOrn,
`
`Inc.,iand Alexander Belfer (collectively hereinafter “Defendants”), whereby Plaintiff
`
`asserts its opposition to said Motion for Summary Judgment.
`
`I. INTRODUCTION
`
`In this action, Right Ascension has asserted claims -for copyright infringement,
`
`I
`
`trademark infringement, trade dress infringement, trademark dilution, and Pennsylvania
`
`

`
`common and statutory law violations. All of Right Ascension’s claims arise from the
`
`Defendants’ theft of materials from Right Ascension’s Internet web site, including
`
`copyrighted works, which they placed on the www.action-dvd.com web site or used to
`
`augment the web site’s content and to sell motion pictures and other audiovisual works on
`
`Digital Video Discs (“DVDS”) in direct competition with Plaintiff.
`
`On July 20, 2002, Right Ascension filed its Supplemental and Amended Complaint
`
`by which it asserted its claims against two more defendants, WEBIMAGEZOOO, Inc.
`
`(“WebImage2000”) and Oleg Minko. Right Ascension identified these two new defendants
`
`through discovery in this case and believes they were directly involved in the
`
`misappropriation of materials from Right Ascension’sweb site as part of the creation and
`
`maintenance of Defendants’ www.action-dvd.com web site. On August 26, 2002,
`
`' WebImage2000 and Mr. Minko filed separate motions to dismiss Right Ascension’s claims
`against them, arguing that this Honorable Court lacks personal jurisdiction. Right
`
`Ascension opposed the Motions to Dismiss and moved for the scheduling of oral
`
`arguments. At this time, the Motions to -Dismiss are pending, and oral arguments have not
`
`been scheduled. While awaiting disposition of the motions to dismiss,_ Defendants Action
`
`Software, Inc., Action - DVD.com, Inc._,.and' Belfer filed their Motion for Summary
`
`_ Judgment.
`
`II. UNDISPUTED AND DISPUTED FACTS
`
`Virtually absent from Defendants’ Memorandum is any reference to the materials,
`
`including copyrighted works, that were stolen from the Right Ascension’s web sites and
`
`placed on the www.action-dvd.com web site (the “Action Site"). It is undisputed in this
`
`case that dozens of original works, including photographs, text in the form of movie
`
`

`
`synopses, and unique compilations of screenshots of movies, were a part of the theft. In
`
`addition, hundreds of box cover scans and individual screen shots, as well as movies
`
`synopses and reviews that were originally prepared by third parties, were also taken from
`
`the Right Ascension Site and used on the Action Site.
`
`Since November 1997, Right Ascension has been in the business of marketing and
`
`selling motion pictures and other audio visual works on DVDs and other media formats
`
`through its Internet web sites at www.dvdempire.com and www.adultdvdempire.corn. The
`
`www.adultclvdempire.com web site, including www.pornstarempire.com, an affiliated web
`
`site (collectively, the ‘Right Ascension Site”) is the web site through which Right
`
`Ascension markets and sells DVDs of adult motion pictures. At the time this action was
`
`commenced, Mr. Jeffrey Rix was the acting CEO of Right Ascension. (Rix Dep. Tr. p. 8,
`
`lines 24-25, p. 9, lines 1-2, Ex. C).
`
`It was not until November 2000 that-Defendants decided to enter the on-line_adult
`
`entertainment business by developing the Action Site. (Belfer Dep. Tr. p.124, 110-25, p.
`
`125, lines 1-19, Ex. A). At about the same time, defendant Belfer asked defendant
`
`4 WebImage2000, Inc. (WebI1nage2000), and its president and web site designer, defendant
`
`Oleg Minko, to develop the Action Site." (Alexander Belfer Dep. Tr. p. 21, line 22-25, p.
`
`22', lines 1-Eu), Ex. A). Defendant Belfer is the president of Action Software and former
`
`'
`
`- CEO and fifty percent (50%) shareholder in WebImage2000. (Belfer Dep. Tr. p. 79, lines
`
`16-17, p. 108, lines 21-23, Ex.A; Minko Dep. Tr. p. 17, lines 1-19, Ex. B). Defendant
`
`Minko holds the other half of the shares in WebImage2000. (Minko Dep. Tr. p. 17, line 18,
`
`EX- B).
`
`Right Ascension is a leading on-line retailer of DVD’s of adult entertainment
`
`motion pictures and owes its success in large part to the use of original materials and the
`
`

`
`selection and arrangement of those original materials and of materials provided by third
`
`parties on the Right Ascension Site. For example, Right Ascension creates and displays
`
`many of its own original photographs of actors and actresses; frequently writes and uses its
`
`own synopses of movies as well as movie reviews; authors many of its own biographies
`
`and interviews of actors and actresses; displays still shots from the movies (“screen shots”)
`
`that are creatively selected and arranged by Right Ascension; and scans movie box covers
`
`which are then arranged and displayed on the Right Ascension Site. (Rix Dep. Tr. P. 158,
`
`lines 23-25, P. 159, lines 1-13; p. 163-164, lines 21-25, 1-20, p. 165, lines 17-25, p. 160,
`
`lines 13-25, p. 141, lines 4-14, pp. 117-120, p. 113, lines 3-9, p. 28, lines 21-25, p. 29,
`
`lines 1-23, Ex. C; Declaration of Mike Barry, attached hereto as Exhibit “D”).
`
`In fact, the
`
`Right Ascension Site is well known and distinguished in the adult entertainment field,
`
`receiving an AVN (Adult Video News) award for the best adult online retail site in 1999.
`
`(Rix Dep. Tr. p. 83, line 13).
`
`Contrary to the statements made in Defendants’ Memorandum, movie studio images
`
`and text on the Right Ascension Site and the Action Site are not obtained or created the
`
`same way. For example, Defendants point to no evidence that DVD box covers were
`
`scanned on the Right Ascension ‘Site after having been downloaded from movie studios’
`
`web sites or uploaded from 'CDs provided to Right Ascension by movie studios.
`
`(Defendants’ Memorandum p. 3). Mr. Rix did not testify, andethere is no evidence to
`support Defendantsl statement, that movies studio images and text were placed on the
`
`Right Ascension Site in such a manner. (See Rix Dep. Tr. p. 108, lines 13-25, Ex. C).
`
`Unlike_Right Ascension, the Defendants do not write their own synopses of movies
`
`or post their own photographs of actors or actresses on the Action Site (Minko Dep. Tr. p.
`
`28-29, p. 30, lines 1-22, ‘Ex. B).. In fact, there are no works that are original to defendant
`
`

`
`Action Software that have been put on the Action Site. (Belfer Dep. Tr. p. 196, lines 3-23,
`
`p. 198, lines 1-4, Ex. A).
`
`In November 2000, Mr. Rix discovered on the Action Site various photographs of
`
`actresses that he had taken personally and movie synopsis that he had written on behalf of
`
`Right Ascension. (Rix Dep. Tr. p. 58, lines 15-25, p. 59, lines l-16, Ex. C). Mr. Rix also
`
`discovered that box cover scans and screen shots of movies had been directly copied from
`
`A the Right Ascension Site and placed on the Action Site.
`
`(Rix Dep. Tr. p. 59, lines 1-16,
`
`. Ex.,C). After Mr. Rix’s initial examination of the Action Site, employees of Right
`
`Ascension, including Mike Barry, the Director of Adult Operations, conducted an
`
`investigation of the entire Action Site over a period of months.
`
`(Rix Dep. Tr. p. 61, line
`
`21425, p. 62, line 1-8; Declaration of Mike Barry, attached as -Exhibit D).
`
`Of the dozens, if"not hundreds, of images and text identified to date by Right
`
`Ascension as having been taken from the Right ‘Ascension Site and duplicated on the
`
`Action Site, there are about 97 web pages that contain 83 original photographs taken by
`
`Right Ascension, original text in the form of movie synopses, and screenshots that were
`
`created and arranged by employee-s of Right Ascension. ' (Barry Declaration, Exhibit D).
`Also taken from the Right Ascension Site and replicated on the Action Site were box cover
`
`images that contained Right .Ascension’s “ADE” mark. (Barry Declaration, Exh-ibit'D). At
`
`no time did Right Ascension give its permission or consent to allow the Defendants, or any
`
`I other person, to take and usethe images and text on the Action.Site.
`
`(Barry Declaration,
`
`. Exhibit D).
`
`Before commencing this action, Right Ascension registered the Right Ascension
`
`, Site as an Online Work with the Register of Copyrights. Right Ascension received from
`
`the Register of Copyrights a Certificate of Registration, No. VA 1-0590873, with a
`
`

`
`registration date of January 18, 2001 (the “Registration Certificate”). A true and correct
`
`copy of the Registration Certificate is attached hereto and made a part hereof as Exhibit
`
`“E”. The Certificate of Registration describes the title of the work as the
`
`“adultdvdempirecom web site” and the nature of the work as an “Internet Web Site”.
`
`Exhibit E. Submitted with the registration application was a computer disk containing a
`
`representative sample of web pages taken from the Right Ascension Site.‘ The
`
`representative sample of the web pages that Right Ascension deposited with the Library of
`
`Congress contains 30 digital images of the www.adultdvdempire.com web site and 26
`
`i digital images from the www.pornstarempire.com web site. It is readily apparent from the
`
`deposit material that the Right Ascension Site included works of third parties. In fact,
`
`contrary to statements in Defendants’ Memorandum, there is no evidence of record that
`
`Right Ascension attempted to intentionally mislead the Register of Copyrights regarding
`
`the _third party content or to conceal that fact.
`
`The difficulty in registering a large Online Work is evident from the instructions
`
`contained in Copyright Office Circular 66, Copyright" Registration -for Online cWorks
`
`0 g(T‘Circ_ular.'66”). Circular 66 provides general information about the copyright registration
`
`i of online works such as the Right Ascension Site that was registered on January 18, 2001.
`
`Exhibit G. Although instructions are provided as to how to complete application Space 2,
`
`“How to describe the Nature of Authorship”, and Space 3, _‘‘Determining if your work is
`
`published or unpublished”, there are no specific instructions provided for completing Space
`6 to describe material contained on an on-line work such as web site. Exhibit G-. The
`
`difficulties of registering the Right Ascension Site areapparent from the fact that the web
`
`I A copy of the deposit material and a Copyright Office certification that the deposit
`material was deposited with the Copyright Office, is attached hereto as Exhibit F.
`
`6
`
`

`
`site consisted at that time of original and third-party works on over 100,000 web pages
`
`containing over 150,000 images and approximately 9,000 movies synopses. (Rix Dep. Tr.
`
`at p. 146, lines 19-25, Ex. C).
`
`Defendants have incorrectly stated that none of the Registration Certificate deposit
`
`material contained in Exhibit E to Defendants’ Memorandum was found on the Action Site.
`
`The testimony of Mr. Rix, as cited by Defendants, makes no reference to such a contention
`
`but rather relates to the dvdempirecom web site.
`
`(See Rix _Dep. Tr. p. 94, lines 8-25, p. 95,
`
`lines 1-21, Ex. C).
`
`In fact, the deposit material that was filed with the Library of Congress
`
`on January 18, 2001 contains original Right Ascension photographs that were discovered
`
`on the Action Site. (Barry Declaration, Exhibit D).
`
`Following the initial registration of the Right Ascension Site, Right Ascension
`
`received from the Register of Copyrights a Certificate of Registration No. TX 5-586-134,
`
`with a registration date of October 2, 2001 (the “Automated Database Registration”). A
`
`true and correct copy of the Automated Database Registration Certificate -is attached hereto
`
`as Exhibit H. Following the Automated Database Registration of the Right Ascension Site,
`
`Right Ascension filed a Supplemental and Amended Complaint on July 30, 2002. In
`
`addition to naming Defendants Minko and WebImage2000-,-additionalclaims were asserted
`
`against -defendants Action Software and Belfer. Defendants have not objected in any way
`to the Automated Database Registration".
`1
`
`On April 30, 2002, Right Ascension filed two trademark applications with the U.S.
`
`Patent. and Trademark Office for the registration for its ADE designation. One application
`
`was for the ADE designation, alone, while the other application was for a design that
`
`incorporated the ADE designation. True and correct copies of the applications are attached
`
`hereto as Exhibits I and J. On December 19, 2002, Defendant Action Software filed an
`
`

`
`opposition to the registration of the ADE designation. On August 19, 2003, the “ADE”
`
`wwwadultdvdempirecom design was registered to Right Ascension by the U.S. Patent and
`
`Trademark Office. A copy of the Certificate of Registration is attached hereto as Exhibit
`
`K. On or about October 24, 2003, Defendant Action Software, filed a motion with the
`
`Commissioner for Trademarks to suspend the proceedings pending the outcome of this
`
`action. (See Exhibit L, attached hereto).2
`
`Even though Defendants attempt to minimize the use and notoriety of the ADE
`
`designation, it was used by Right Ascension on promotional products, including decals and
`
`,' T-shirts.
`
`(Rix Dep. Tr. p. 46, lines 2-5). The Defendants’ lack of samples of the
`
`promotional products containing the ADE mark does not change the fact that Right
`
`"Ascension used the ADE mark to promote the services and products that it offered to its
`
`customers.
`
`In addition to being placed on promotional products, the ADE designation was also
`
`placed on box‘ cover scans that were uploaded on the Right Ascension Site to market the
`sale of DVDS. _(Rix Dep. Tr. p. 46, lines2-5, Ex. C). The ADE designation is a brand of
`Adult DVD Empire that was first used to promote its servicesbefore Right Ascension
`
`discovered that the Defendants stole the box cover images in approximatelyNovember
`
`-2000. (Rix Dep. Tr. p. 44, lines 15-16, p. 61,Ex. C).
`
`‘
`
`As part of its investigation of materials that had been taken from the Right
`
`Ascension Site, Plaintiff determined that hundreds of box cover scans that appeared on the
`
`Action Site contained Right Ascension’s ADE designation. (Barry Declaration, Exhibit D).
`
`- Although: it is not evident from copies of box cover scans, the ADE designation is
`
`2 Counsel for Right Ascension did not receive the actual Motion to Suspend Proceedings Pending Outcome
`of Civil Action; hence a copy of the correspondence from Mark Avsec, one of the attorneys for Defendant
`
`

`
`prominently displayed on the box covers in digital form on the Right Ascension Site or in
`
`the digital screen captures taken from the Action Site.
`
`In fact, the ADE designation is
`
`readily apparent from even a casual on-line observation of the box covers. (Barry
`
`Declaration, Exhibit D).
`
`III. LAW AND ARGUMENT
`
`Defendants’ Motion for Summary Judgment does not state any specific basis or
`
`support for their request to have all of Plaintiff’ s claims dismissed as a matter of law. The
`
`Motion for Summary Judgment merely says that Right Ascension’s claims “are meritless”,
`
`while the supporting Memorandum provides the actual arguments for summary judgment.
`
`‘ The Motion does manage to include, however, several gratuitous, but misleading,
`
`allegations that Plaintiff believesshould be addressed.
`
`First, the Motion says that Right Ascension has done little to prosecute this case.
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`4 Plaintiff has, in fact, moved to -expeditiously protect its interest. For example, after this
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`action was commenced, most, if not all, of the material stolen from Plaintiff Right
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`Ascension’s web site and placed on the defendant’s web site has been removed by
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`- defendants. Plaintiff has aggressively pursued discovery, thoughivigorously resisted by
`' defendants, that resulted in the naming of co-conspirators WebImage2000 and Oleg Minko
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`as defendants to this lawsuit. This Court is also aware that at the time this action was
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`commenced, Plaintiff moved for injunctive relief that was subsequently dismissed without
`prejudiced.
`I
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`Second, Defendants say that Right Ascension cancelled a planned mediation and
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`imply that it did not want the case-to be resolve by mediation or otherwise. This
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`Action, is attached in its place.
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`misconstrues the facts regarding the mediation and Plaintiff’ s efforts to move this case to a
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`conclusion. The facts are that it was Plaintiff that initially suggested and sought to have
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`this case mediated. Upon learning through discovery, however, that two or more other
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`parties should be added as defendants, Plaintiff reluctantly determined that the mediation
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`could not accomplish its goals and should be postponed — not cancelled — until all of the
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`defendants could participate. In fact, Plaintiff believes that as soon as the pending motions
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`to dismiss have been ruled upon the parties should proceed again with the previously
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`approved mediation.
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`"Third, Defendants’ Motion remarks upon the addition of WebImage2000 and Mr.
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`Minko as “belated”, with the implication that, somehow, Plaintiff’ s amending of the
`Complaint to accomplish this was not done in good faith. That simply is not true. Plaintiff
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`added these two defendants as soon as practicable upon learning of their roles through
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`discovery and only after having to overcome Defendants’ strenuous objections and
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`obtaining the Court’s leave to do so‘. If there was any delay in adding WebImage2000 and
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`Mr". Minko as parties, it resulted ‘from Defendants’ consistent resistance to Plaintiffs
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`efforts to discover how the contents of -its web site were stolen and ended up on the
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`Defendants’ website.
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`As for the arguments set forth in the thirty-five pages of Defendants’ Memorandum,
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`they are dealt with separately below.
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`A. The Summary Judgment Standard
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`Plaintiff would add to the law set forth in Defendants’ Memorandum concerning the -
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`standard for summary judgment that the Court_ must resolve all ambiguities and draw all
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`10
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`reasonable inferences against the moving party. Bailey v. United Airlines, 279 F.3d 194
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`(3d Cir. 2002).
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`B. Plaintiff’s Copyright Registration Is Valid and Provides this Court with Subject
`Matter Jurisdiction for Count I, Copyright Infringement.
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`In Section III. B. oftheir Memorandum, Defendants argue (a) that Plaintiff
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`mischaracterized in its copyright application the nature of its site and concealed the fact
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`that it contained works created by others; (b) that, as a result, Plaintiff’ 3 registration is not
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`valid; and, therefore, (c) that this Court does not have subject matterjurisdiction over the
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`claim for copyright infringement. Defendants’ argument grossly misstates the facts of this
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`case and misapplies the law.
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`Plaintiff did -not intentionally mischaracterize the nature of the copyright sought in
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`its copyright registration, nor did it conceal the contributions of others. Defendants have
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`provided no evidence to support such accusations, except to point to instances where
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`_ Plaintiff has freely and openly acknowledged the presence of preexisting materials on their
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`retail web site. Plaintiff submits that such evidence is directly contrary to the conclusion
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`Defendantswould -like to reach. Moreover, the facts are clear that that Plaintiff has never
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`I intended to assert, in this action or in its copyright registration documents, that it is the
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`author or copyright owner with regard to any of -the materials on its web site that were
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`created by third parties.
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`What would be the possible purpose or motive on Plaintiff's part to mislead the
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`Copyright "Office in the way Defendants are suggesting? There simply is‘ none. In this
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`M case, the copyright owners for all of the third party materials happen to be the suppliers of
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`the primary product sold by Plaintiff, with whom it enjoys a beneficial economic
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`relationship that would be destroyed should Plaintiff ever try to assert a copyright in their
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`11
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`products.
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`It is apparent, therefore, that Plaintiff had every reason not to attempt to assert
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`its own copyright in such works.
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`Furthermore, it is obvious from the most cursory examination of Plaintiff’ s website
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`and of the deposit materials submitted to the Copyright Office that the website includes
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`materials made by others, namely the work of various movie studios. See Exhibit F. There
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`is nothing on the web site, on the application or in the deposit materials that would lead
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`one to conclude that such products were Plaintiff's own creations, or that Plaintiff was
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`attempting to portray them as such.
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`At the time Plaintiff filed its initial application for copyright registration, dated
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`January 18, 2001, filing as an onlinework was reasonably determined to be the most
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`appropriate method for registering the copyrightable elements of the dvdempire.com and
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`a_du1tdvdempire.com web sites. See U. S. Copyright Office, Circular 66, “Copyright
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`A Registration for Online Works”, Exhibit H. Moreover, there are no instructions in Circular
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`66 for completing Space 6 of the application that provides any direction or guidance for
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`I
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`’ identifying Right Ascension’_s unique Online Work that over 100,000 web pages made up
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`of both original and third-‘party works. Exhibit H. "Only lat_er,did the Copyright Office
`advise Plaintiff that it would consider an application to register the web sites as a group
`' automated database, which might be better suited for registering electronic.retail sites such
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`as Plaintiff’ s that were updated on a very‘ frequent basis. As a result, Plaintiff filed a
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`registrationapplication, effective October 2, 2001, as an automated database. See U. S.
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`Copyright Office, Circular 65, “Copyright Reg