entirely an different concept and feel for the two designs.
Mr. Theotokatos' designs and the accused designs only share similar ideas, while their expressions are different. The only similarities between the designs are insubstantial because they relate to nonprotectible elements of Mr. Theotokatos' designs, e.g., his idea of arranging flags of past host countries in simple shapes with a central design commemorating the centennial Olympics, and his use of the underlying preexisting works. Mr. Theotokatos' designs also have an entirely different concept and feel than the accused designs. Therefore, the court finds that the protectible elements of Mr. Theotokatos' designs are not substantially similar to the accused designs as a matter of law. Both because there is no substantial similarity and because Mr. Theotokatos' copyrights in his designs are invalid, the court grants Andazia's motion to dismiss Mr. Theotokatos' amended complaint against Sara Lee for copyright infringement.
The Third-Party Indemnity Claim
In its motion to dismiss, Andazia also sought the dismissal of Sara Lee's third-party complaint against it, reasoning that if there was no longer any underlying claim, Sara Lee could have no cause of action for indemnity against it. As the pleadings associated with Sara Lee's motion for summary judgment have made clear, however, the validity of the indemnity claim does not depend on the continued existence of the underlying claim. We thus deny Andazia's motion to dismiss insofar as it seeks the dismissal of the third-party complaint.
II. Sara Lee's Motion for Summary Judgment
Sara Lee has filed its own motion for summary judgment against Andazia on its contractual indemnification claim. Andazia argues that Sara Lee's motion for summary judgment should be denied to permit it to conduct discovery and develop its defenses against the claim. In support of this argument, Andazia has filed an affidavit and memorandum outlining its proposed defenses and the discovery required. This Court has not conducted a full-scale investigation of Andazia's proposed defenses. We find, however, that at least one defense is potentially valid and deserving of additional discovery under Fed. R. Civ. P 56(f).
Federal Rule of Civil Procedure 56(f) allows a party to obtain additional discovery before a summary judgment ruling under certain circumstances. A party invoking Federal Rule 56(f) "must do so in good faith by affirmatively demonstrating why he cannot respond to a movant's affidavits . . . and how postponement of a ruling on the motion will enable him, by discovery or other means, to rebut the movant's showing of the absence of a genuine issue of fact." Korf v. Ball State Univ., 726 F.2d 1222, 1230 (7th Cir. 1984) (quoting Willmar Poultry Co. v. Morton-Norwich Prods., Inc., 520 F.2d 289, 297 (8th Cir. 1975)). The party opposing summary judgment must make his request for additional discovery in the form of an affidavit and show that additional relevant evidence exists. FED. R. CIV. P. 56(f); Ford v. Roth, 1993 U.S. Dist. LEXIS 4025, No. 91 C 4907, 1993 WL 96526, at *2 (N.D. Ill. March 31, 1993). Specific assertions which could produce a genuine issue of material fact, not mere speculation, are required. United States v. On Leong Chinese Merchants Ass'n Bldg., 918 F.2d 1289, 1295 (7th Cir. 1990); Ford, 1993 U.S. Dist. LEXIS 4025, 1993 WL 96526, at *2. The party must also show that he has not been dilatory in pursuing discovery. United States v. Bob Stofer Oldsmobile-Cadillac, Inc., 766 F.2d 1147, 1152-53 (7th Cir. 1985). Several factors are relevant in determining whether a party has been dilatory: "1) the length of the pendency of the case prior to the Rule 56(f) request; 2) whether and when plaintiff could have anticipated its need for the requested discovery; 3) the previous efforts, if any, made by plaintiff to obtain the needed information either through Rule discovery or otherwise; 4) the degree and nature of discovery already undertaken; 5) any limitations placed upon discovery previously by the trial court; 6) any prior solicitations of or provisions for discovery by the trial court; 7) any warning which plaintiff might have had that, absent a speedier request, discovery might be denied and his claim dismissed; and 8) whether the requested information was inaccessible to plaintiff." Paul Kadair, Inc. v. Sony Corp., 694 F.2d 1017, 1031 (5th Cir. 1983).
Although Andazia did not file a formal separate motion pursuant to Rule 56(f), it requested additional discovery in its memorandum in opposition to Sara Lee's motion for summary judgment, and attached a supporting affidavit from its attorney. Andazia outlined several possible defenses to Sara Lee's claim for indemnification and specified the type of information needed from discovery to support them. Thus, Andazia provided a sufficiently detailed request for discovery even though it was not made in a separate motion. See Pfeil v. Rogers, 757 F.2d 850, 856 (7th Cir. 1985) ("A court may disregard a failure to formally comply with Rule 56(f) if the . . . request for a continuance clearly sets out the justification for the continuance"); cf. Demitropoulos v. Bank One Milwaukee, N.A., 953 F. Supp. 974, 986 n. 18 (N.D. Ill. 1997) (Rule 56(f) discovery denied where request made in footnote without affidavit describing materials sought).
In its request, Andazia specified evidence that could be obtained through discovery which would produce a potentially valid defense against Sara Lee's indemnification claim. Andazia points to indications that Mr. Theotokatos asserted a claim against Sara Lee prior to filing his July 1996 complaint, and seeks to conduct discovery to determine exactly when he made his first claim. It is possible, Andazia argues, that Sara Lee breached the indemnification provision's notice requirement by failing to notify Andazia of an earlier claim, thus prejudicing Andazia's ability to immediately settle or defend the claim on its own. Although we of course do not rule on the validity of this defense at this point, preliminary research indicates that Andazia's argument may raise a legally viable defense. See Sersted v. American Can Co., 535 F. Supp. 1072, 1076 (E.D. Wis. 1982) (notice requirement of an indemnification provision in sales contract is material: it allows settlement between the parties and minimizes possibility of prejudice to indemnitor by giving him the opportunity to investigate and take action to properly defend himself); Great Am. Ins. Co. v. C.G. Tate Constr. Co., 303 N.C. 387, 279 S.E.2d 769, 775 (N.C. 1981) (clear purpose and importance of notice provisions in insurance contracts is to protect insurer's ability to defend itself; where a delay in notice by insured prejudices insurer's ability to defend itself, insurer is released from liability). Thus, Andazia has identified at least one potential defense that merits additional discovery.
In response, Sara Lee argues that this defense does not raise a genuine issue of material fact because it involves only speculation about a hypothetical breach. However, Andazia avers that its specific assertions regarding Sara Lee's possible breach of the notice provision are based on two letters in its possession. Sara Lee also protests that Andazia has been dilatory in failing to serve discovery on Sara Lee. We do not believe that this argument is supported by the record to date. Sara Lee's third-party complaint against Andazia was filed only three months before Andazia's Rule 56(f) request. Cf. Paul Kadair, Inc., 694 F.2d at 1031-32 (one year delay in pursuing discovery was dilatory); Colby v. J. C. Penney Co., 926 F.2d 645, 648 (7th Cir. 1991) (nine years sufficient time to conduct discovery needed to oppose summary judgment). In addition, Andazia has provided a reasonable explanation for its decision not to commence discovery proceedings: it is waiting for a ruling from us on its motion to dismiss before beginning discovery. If the court grants Andazia's motion (as indeed it has), the nature of the entire lawsuit is likely to change significantly, as there will no longer be an underlying copyright infringement claim against Sara Lee. It was reasonable for Andazia to wait for the court's decision before embarking on costly discovery proceedings when its case against Sara Lee was subject to considerable change. Moreover, it is difficult to characterize Andazia's actions in these proceedings as dilatory, as it reacted expediently to Sara Lee's third party complaint by filing its motion to dismiss shortly afterwards. Thus, Andazia has not been dilatory in declining to commence discovery against Sara Lee.
Because discovery may allow Andazia to produce a valid defense against Sara Lee's indemnification claim, Sara Lee's motion for summary judgment is denied without prejudice and Andazia is granted leave to take discovery.
The court grants in part and denies in part third-party defendant Andazia's motion to dismiss [16-1]. The motion is granted to the extent that the plaintiff's amended complaint against Sara Lee is dismissed with prejudice; it is denied in all other respects. The court denies the motion of defendant/third-party plaintiff Sara Lee Personal Products for summary judgment [23-1] without prejudice to its renewal at a later date. The parties to the sole claim remaining in this lawsuit, Sara Lee's indemnity claim against Andazia, shall appear on July 23, 1997 at 9:00 a.m. for a status hearing to discuss the future direction of this case.
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United States District Judge
July 8, 1997