A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Court Declines to Find Spoliation in Destruction of Counterfeit Books

In an October 2, 2015 ruling, Magistrate Judge Gabriel W. Gorenstein declined to find spoliation by a defendant who destroyed certain counterfeit books before the start of copyright litigation. The defendant had previously settled a copyright infringement action by the same plaintiffs for the sale of counterfeit books. The settlement agreement in the prior litigation did not impose any preservation obligations if the defendant came to possess counterfeit books post-settlement. The defendant in fact did so, and destroyed some of the counterfeit books before the start of this current action. Judge Gorenstein rejected the argument that the previous lawsuit imposed an obligation on the defendant to preserve all counterfeit books in its possession. The Court reasoned:
Plaintiffs perhaps envision a regime under which any tortfeasor is required to preserve all evidence of their wrongdoing indefinitely. That is not the law that governs spoliation, however. Instead, a prerequisite to the duty to preserve is that there be an actual litigation or “reasonably foreseeable” litigation. . . . Given the circumstances that existed at the time the destruction of books occurred, we cannot find that litigation over the counterfeit books defendants found in their possession – not only the ones that had never been sold but even the relative few that had been returned from purchasers – was “reasonably foreseeable.”
Judge Gorenstein further found that the plaintiffs’ pre-litigation demand letter that the defendant preserve evidence did not trigger a preservation obligation because the letter “did not list any specific acts of infringement or even provide a list of titles that were at issue,” and that “to be effective in alerting a party to the potential institution of litigation, the letter must give some specifics as to the particular claim that will be made.”
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