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EDNY District Court Judge Seybert's decision on plaintiff's motion for summary judgment in a copyright infringement case against New York State senators
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UNITED STATES DISTRICT COURTEASTERN DISTRICT OF NEW YORK-----------------------------------XSTUDENT LIFELINE, INC.,
Plaintiff,
-against- MEMORANDUM & ORDER04-CV-5484(JS)(JO)
THE SENATE OF THE STATE OF NEW YORK, JOSEPH L. BRUNO, JIM ALESI, MICHAELA.L. BALBONI, JOHN A. DEFRANCISCO, CHARLES J. FUSCHILLO, KENNETH P.LAVALLE, JOSEPH E. ROBACH, MARY LOU RATH, STEPHEN M. SALAND, MARTIN J.GOLDEN, JOHN J. FLANAGAN, KEMP HANNON,and NEW YORK STATE SENATORS, “JOHN DOE” and “JANE DOE,” being the fictitious names of other Senate members, presentlyunknown to claimant, all individually and in their respective capacities asNew York State Senators,
Defendants.------------------------------------X
Appearances:For Plaintiff: John A. Dalley, Esq.
225 Broadway, Suite 3800New York, New York 10007
For Defendants: Dorothy O. Nese, Esq.Attorney General of the State of New York200 Old Country Road, Suite 460Mineola, New York 11501
SEYBERT, District Judge:
INTRODUCTION
Pending before the Court is Plaintiff’s motion for
summary judgment on its copyright infringement claim and
Defendants’ motion for consolidation and a change of venue. For
the reasons below, the Court grants in part Defendants’ motion and
DENIES in its entirety Plaintiff’s motion.
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 1 of 22
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BACKGROUND
The relevant facts are taken from the parties Rule 56.1
statements. Plaintiff is the author, owner, and copyright claimant
of a work titled “Private Children’s ID Record” (“ID Record”).
(Plaintiff’s Rule 56.1 Statement (“Pl.’s Stmt.”) ¶ 1.) The ID
Record is also known as the “National Child ID Kit” and has
copyright registration number TX 6-029-829. (Id. at ¶ 1.)
Although the copyright registration was effective on October 13,
2004, the ID Record was created in 2001 and first published in the
United States in July, 2002. (Id. at ¶¶ 2-3.)
At least as early as August 2003, Defendants possessed
copies of the ID Record. (Id. at ¶ 4.) Plaintiff claims that
Defendants copied the ID Record to distribute for their own
purposes. (Id. at ¶ 5.) Defendants claim they did not copy the ID
Record, but they also argue that Plaintiff does not have a
protectible copyright in the ID Record because it is not original
and subsists in the public domain. (Defendants’ Rule 56.1 Counter-
Statement (“Defs.’ Stmt.”) ¶ F.)
PROCEDURAL BACKGROUND
On December 16, 2004, Plaintiff commenced this action,
claiming copyright and trademark infringement. On March 8, 2006,
Plaintiff filed an action in the Southern District of New York
against former New York State Senator Guy Vellella. On August 2,
2006, Plaintiff filed another action in the Eastern District,
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 2 of 22
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naming an additional seven Defendants. On August 3, 2006,
Plaintiff filed a second complaint in the Southern District of New
York against an additional six Senators. And on August 10, 2006,
Plaintiff commenced an action against an additional ten Senators in
the Northern District of New York. Plaintiff also filed an action
against the New York State Senate in New York State’s Court of
Claims. (Defs.’ Mem. 1-4.) Lastly, Defendants and the New York
State Senate as an institution commenced an opposition proceeding
in the U.S. Patent & Trademark Office to oppose Plaintiff’s
registration of the ID Record and its accompanying logo, the Hand.
(Pl.’s Opp. 7-8.)
DISCUSSION
I. MOTION TO CONSOLIDATE AND CHANGE VENUE
The Court notes at the outset that Plaintiff does not
oppose consolidation of the two Eastern District actions.
Plaintiff, however, opposes that these actions be transferred to
the Northern District of New York. Because Plaintiff does not
oppose consolidation, the Court consolidates the two Eastern
District actions into one. The two matters with docket numbers
04-5484 and 06-3781 are consolidated, and the lead case shall be
04-5484.
The Court also notes that both parties would like this
Court to consolidate the actions brought in the Southern and
Northern districts with those actions in this district. However,
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 3 of 22
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any motions to consolidate and change venues for the non-Eastern
District actions must be brought in their respective districts.
The Court cannot consolidate or change the venues of actions not
before this Court. Thus, this Order deals solely with the two
Eastern District actions before the Court and whether venue
properly lies in this District. Accordingly, the Court now turns
to Defendants’ motion to transfer these two cases to the Northern
District of New York.
A. Applicable Law For A Change In Venue
28 U.S.C. § 1404 governs when a court can transfer
actions to a different venue.
(a) For the convenience of parties and witnesses, in theinterest of justice, a district court may transfer anycivil action to any other district or division where itmight have been brought.(b) Upon motion, consent or stipulation of all parties,any action, suit or proceeding of a civil nature or anymotion or hearing thereof, may be transferred, in thediscretion of the court, from the division in whichpending to any other division in the same district.
28 U.S.C. § 1404.
The goal of the above-cited statute “is to prevent waste
of time, energy and money and to protect litigants, witnesses and
the public against unnecessary inconvenience and expense.” Laumann
Mfg. Corp. v. Castings USA, Inc., 913 F. Supp. 712, 720 (E.D.N.Y.
1996) (citing Van Dusen v. Barrack, 376 U.S. 612, 11 L. Ed. 2d 945,
84 S. Ct. 805 (1964)). The Court must first decide if the actions
could have been brought in the Northern District of New York. If
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 4 of 22
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it could be validly brought in the Northern District, then the
court must next decide whether “the convenience of the parties and
witnesses” and “the interest of justice” weigh in favor of
transferring to the proposed district. Id. at 720.
The moving party has the “burden to clearly establish
that a transfer is appropriate and that the motion should be
granted.” Id. “The moving party must support the motion with an
affidavit containing detailed factual statements explaining why the
transferee forum is more convenient, including the potential
principal witnesses expected to be called and a general statement
of the substance of their testimony.” Id. (quoting Modern Computer
Corp. v. Hsi Ma, 862 F. Supp. 938, 947-48 (E.D.N.Y. 1994)).
A court must also review a number of factors before
transferring a case to another district. None individually are
dispositive, however. A court should not change a plaintiff’s
choice of forum unless the following factors weigh heavily in
defendant’s favor:
(1) convenience of the parties, (2) convenience of thewitnesses, (3) relative means of the parties, (4) locusof operative facts and relative ease of access to sourcesof proof, (5) attendance of witnesses, (6) weightaccorded a plaintiff’s choice of forum, (7) calendarcongestion, (8) desirability of having case tried by aforum familiar with the substantive law to be applied,(9) practical difficulties, and (10) how best to servethe interest of justice, based on an assessment of thetotality of circumstances.
Id. (quoting Modern Computer Corp., 862 F. Supp. at 948).
B. Application
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 5 of 22
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The Court begins its change-of-venue analysis with the
premise that the Plaintiff’s choice of forum should not be
disturbed unless the factor analysis weighs in Defendants’ favor.
Plaintiff is a small, closely held corporation organized in New
York State. (Declaration of Richard Signarino (“Signarino Decl.”)
¶ 3.) Plaintiff’s president and sole shareholder is Mr. Richard J.
Signarino. (Signarino Decl. ¶ 1.) Mr. Signarino also authored the
creative work at issue in this action and is a resident of the
Eastern District. (Pl.’s Opp. 5.) Accordingly, the Court finds
that the forum is convenient to Plaintiff.
As for whether Plaintiffs could have brought these two
actions in the Northern District, Defendants point out that all
Defendants in both actions sit as New York State Senators with
offices in Albany in the Northern District. Plaintiff does not
contest the validity of the alternative forum and has brought suit
in both the Northern and Southern Districts. Accordingly, the
Court finds that Plaintiff could have brought these two Eastern
District actions in the Northern District as well.
The Court thus moves to the factor analysis. In this
action, Plaintiff sues the Senate as well as twelve individual
Senators. In the related Eastern District action, an additional
seven Senators were sued for a total of nineteen individual
Senators being sued in the Eastern District. With this in mind,
the Court now turns to the list of factors annunciated in Laumann.
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 6 of 22
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1. Convenience Of The Parties
The Court has already established that the Eastern
District is convenient to Plaintiff. Plaintiff’s sole shareholder
and president and author of the creative work is a resident of the
Eastern District. While defense counsel points out in her
affidavit that all nineteen Eastern District Defendants have
offices in the Northern District, only six of the Defendants can
claim that the Eastern District is an inappropriate venue. (Nese
Aff. ¶ 3.) The Eastern District thus is the most convenient venue
for Plaintiff and for most of the Defendants. Accordingly, the
Court finds that this factor weighs in favor of Plaintiff.
2. Convenience Of Witnesses
Defendants next claim that the Northern District is most
convenient for the non-party witnesses because the “overwhelming
majority of the non-party witnesses live, work and/or are employed”
in the Northern District. (Nese Aff. ¶ 3.) Some witnesses,
however, also reside in this District. (Id. ¶ 8.) And those non-
party witnesses have already been deposed. (Id.) Furthermore,
Defendants have not stated which of these witnesses would be
potential principal witnesses or what would be the substance of
their testimony. Laumann requires Defendants to provide this
information. See Laumann Mfg. Corp., 913 F. Supp. at 720.
Defense counsel merely anticipates that “many, if not
most of the as-yet unidentified, non-party witnesses who are or
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 7 of 22
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were staff members of the seven Senator-Defendants in the related
case before this Court, may have relevant and material information
about these claims and/or defenses.” (Nese Aff. ¶ 10.) Plaintiff
does not indicate which of the seventeen witnesses already deposed
would be their “potential principal witnesses.” Laumann Mfg.
Corp., 913 F. Supp. at 720. Defendants also state only what these
witnesses “may” testify about. (Nese Aff. ¶ 8.)
Without more information, the Court cannot say that the
Eastern District is less or more convenient for the non-party
witnesses. The Court cannot discern how many of the seventeen
witnesses would be required at a trial or for how long - nor should
the Court have to - the burden is on Defendants to establish that
the Northern District is the appropriate venue. Accordingly, the
Court finds that this factor does not weigh in favor of Defendants
or Plaintiffs.
3. Relative Means Of The Parties
Defendants claim that New York State taxpayers are paying
to defend this action. (Defs.’ Mem. 14.) Defendants argue that
keeping these two actions in this District would strain the public
fisc much more than transferring them to the Northern District.
Litigation in just one district would result in less of a financial
strain on the state fisc. (Nese Aff. ¶ 11.) However, this problem
can also be avoided if the two actions in the Northern and Southern
districts were transferred to the Eastern District.
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 8 of 22
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The Court also must consider Plaintiff’s financial means.
Plaintiff is a small, closely held corporation with gross annual
revenue of approximately 1.5 million dollars for the last five
years. This amount of revenue is not exactly small; Plaintiff,
however, has demonstrated that its sole shareholder has incurred
personal debt through his life insurance policy, home equity loans,
and other personal resources. (Signarino Aff. ¶ 4; Ex. A.)
Plaintiff has also shown willingness to forego the
actions in the Northern District if it means keeping the venue in
the Eastern District. If the Court transferred these actions to
the Northern District, the cost to Plaintiff would be so high that
Plaintiff would likely not be able to afford the litigation costs
in the Northern District. To avoid such a result, Plaintiff is
willing to discontinue the Northern District action to avoid
transfer of these actions to that District. (Pl.’s Opp. 8.)
Accordingly, the Court finds that the relative means of
the parties weighs in favor of Plaintiff litigating these two
actions in the Eastern District.
4. Locus Of Operative Facts And Relative Ease OfAccess To Sources Of Proof
As for the locus of operative facts and access to sources
of proof, Defendants claim that most of the infringing activities
took place in Albany in the Northern District. (Nese Aff. ¶ 12.)
Senate employees designed and revised the Senate’s child
identification brochures in Albany. Printing, shipping, and
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 9 of 22
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processing of orders occurred in Albany. And many of the documents
at issue are stored in the Senate’s print shop in Albany.
Notwithstanding, this factor does not appear to weigh
heavily in Defendants’ favor. While some of the infringing conduct
occurred in Albany, Plaintiff contends that Defendants distributed
the infringing kits throughout all three districts. Moreover, most
of the Defendants that had prior agreements with Plaintiff are in
this District. (Pl.’s Opp. 6-7.) Lastly, the “subject matter is
creative work –- intellectual property –- and so the suit itself
has less natural connection to any particular forum, leaving the
convenience of the parties to be the primary consideration.” Gross
v. BBC, 386 F.3d 224, 233 (2d Cir. 2004).
5. Attendance Of Witnesses
Defendants again point out that the overwhelming majority
of Defendants and witnesses maintain residences and work in the
Northern District. Defendants also point out that most of the
depositions in this case have taken place in Albany. Thus, a trial
in the Northern District would be least burdensome on the
Defendants and witnesses.
But the Court fails to see how this will prohibit the
attendance of the witnesses. While it may be inconvenient,
burdensome, or expensive, Defendants do not indicate that they or
any witnesses will be physically unable to attend a trial in the
Eastern District. And as we are dealing only with the Defendants
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 10 of 22
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in the Eastern District actions, most of those Defendants are
located within the district. This seems to weigh more heavily in
favor of the Eastern District as the most appropriate venue.
6. Weight Accorded A Plaintiff’s Choice Of Forum
As already established, the Court gives great weight to
Plaintiff’s choice of forum. Plaintiff’s choice of forum should
not be disturbed unless this factor analysis weighs heavily in
Defendants’ favor. Further, the Court already pointed out that
Plaintiff is a corporation whose sole shareholder and owner resides
in the Eastern District. This district is most convenient for
Plaintiff. The Court has already addressed Defendants’ arguments
in this regard and rejects them again.
7. Calendar Congestion
Calendar congestion is not an issue in this Court and the
Eastern District. In fact, discovery is scheduled to be completed
by January 31, 2007. All discovery has been conducted under the
guidance of Magistrate Judge James Orenstein, sitting in the
Eastern District. On the other hand, a trial would not occur in
the Northern District for at least another year. (Defs.’ Mem. 15.)
Accordingly, the Court finds that this factor does not weigh
heavily in favor of Defendants.
8. Desirability Of Having Case Tried By A ForumFamiliar With The Substantive Law To Be Applied
The Court finds that this factor weighs more heavily in
favor of the Eastern District. Defendants simply conclude that
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 11 of 22
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this factor weighs equally among all the different districts.
However, this Court and Magistrate Judge Orenstein have handled
this case from the beginning. As pointed out earlier, the
Magistrate has overseen most of the discovery, which is to be
completed at the end of January 2007. Not only is the Eastern
District familiar with the substantive law to be applied, it is
quite familiar with the parties and the facts of this case.
9. Practical Difficulties
Defendants reiterate the same issues for this factor as
for the others. Litigating five separate actions in three
different districts is formidable: the cost to transport numerous
Defendants, witnesses, and documents to the Eastern District will
be prohibitive.
The Court, however, has already suggested that the
parties move to transfer the other actions to this District in
which discovery is about to close. Thus, only this district will
be involved. Further, Plaintiff is willing to forego the action in
the Northern District. As for the cost of transporting people and
documents, Defendants have not indicated which of the witnesses are
their primary witnesses that will have to be transported.
Accordingly, the Court finds this factor does not weigh in favor of
Defendants.
10. How Best To Serve The Interest Of Justice, Based OnAn Assessment Of The Totality Of Circumstances
Defendants state the same arguments already rejected by
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 12 of 22
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this Court. Accordingly, the Court finds this factor does not
weigh in favor of Defendants. For the reasons stated above, the
Court consolidates the two Eastern District actions and REJECTS
Defendants’ motion to transfer venue of these actions to the
Northern District of New York.
II. PLAINTIFF’S MOTION FOR PARTIAL SUMMARY JUDGMENT
A. Standard Of Review
A district court may properly grant summary judgment only
“if the pleadings, depositions, answers to interrogatories, and
admissions on file, together with any affidavits, if any, show that
there is no genuine issue as to any material fact and that the
moving party is entitled to judgment as a matter of law.” FED. R.
CIV. P. 56 (c). The burden of proof is on the moving party to show
no genuine issue of material fact exists. See Gallo v. Prudential
Residential Servs., L.P., 22 F.3d 1219, 1223 (2d Cir. 1994)(citing
Heyman v. Commerce & Indus. Ins. Co., 524 F.2d 1317, 1320 (2d Cir.
1975)). “[A]ll ambiguities must be resolved and all inferences
drawn in favor of the party against whom summary judgment is
sought.” Id. (citing Eastway Constr. Corp. v. City of New York,
762 F.2d 243, 249 (2d Cir. 1985)).
Although the court must construe all evidence in the non-
moving party’s favor, a party opposing summary judgment may not
rely on conclusory allegations or unsubstantiated speculation. See
Fujitsu Ltd. v. Federal Express Corp., 247 F.3d 423, 428 (2d Cir.
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 13 of 22
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2001). To defeat a motion for summary judgment, the non-moving
party must show a “‘genuine issue for trial.’” Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 91 L. Ed. 2d 202
(1986)(quoting First Nat’l Bank v. Cities Serv. Co., 391 U.S. 253,
288, S. Ct. 1575, 20 L. Ed. 2d 569 (1968)). Within this framework,
the Court addresses the present summary judgment motion.
B. Plaintiff’s Motion For Summary Judgment OnIts Copyright Infringement Claim
Plaintiff argues that it is entitled to summary judgment
as a matter of law on its copyright infringement claim under the
Copyright Act of 1976 (“Copyright Act”). The Copyright Act gives
copyright owners a bundle of exclusive rights, such as the right to
“reproduce the copyrighted work in copies” and “to prepare
derivative works based upon the copyright work.” 17 U.S.C. § 106.
To establish a prima facie case of copyright infringement, a
plaintiff must prove “(1) ownership of a valid copyright, and (2)
copying of constituent elements of the work that are original.”
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340,
361, 111 S. Ct. 1282, 113 L. Ed. 2d 358 (1991).
The second element of a copyright infringement claim
requires that a plaintiff show (a) that his work was actually
copied and (b) that the copying is an “improper and unlawful
appropriation.” Castle Rock Entm’t, Inc. v. Carol Publ’g Group,
Inc., 150 F.3d 132, 137 (2d Cir. 1998). Actual copying is
established by either “direct evidence of copying or . . . indirect
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 14 of 22
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evidence, including access to the copyrighted work, similarities
that are probative of copying between the works, and expert
testimony.” Id. (citations and internal quotation marks omitted).
A plaintiff then must demonstrate “the copying was improper or
unlawful by showing that the second works bears substantial
similarity to protected expression in the earlier work.” Id.
1. Valid Copyright
Plaintiff claims that its copyright registration
certificate issued by the Copyright Office is prima facie evidence
of a valid copyright. Defendants, however, argue that they have
rebutted any presumption of a valid copyright because they claim
that Plaintiff never obtained a valid copyright for the
identification forms. They also question the originality of
Plaintiff’s product.
“A certificate of registration from the United States
Register of Copyrights [is] prima facie evidence of the valid
ownership of a copyright.” Jorgenson v. Epic/Sony Records, 351
F.3d 46, 51 (2d Cir. 2003) (citing 17 U.S.C. § 410(c)). The
certificate creates a “rebuttable presumption that the work in
question is copyrightable.” Fonar Corp. v. Domenick, 105 F.3d 99,
104 (2d Cir. 1997) (citations and internal quotation marks
omitted). When a plaintiff proffers a certificate of copyright
registration, the burden is on the defendants to prove the
invalidity of the copyright. See id.
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 15 of 22
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Defendants’ first argument is that Plaintiff never
sought and received copyright protection for the i.d. form, only
for the front and back covers of the Kit. In response, Plaintiff
has presented a certificate from the U.S. Copyright Office with a
color photocopy of what is deposited there. The work is entitled
“Private Children’s ID Record,” and the Copyright Office has
stamped the second and third pages of the ID Record - not just the
front and back covers of the ID Record. (Signarino Reply Decl. Ex.
B.) The Court finds that this evidence suffices to reject
Defendants’ argument that only the front and back covers of the Kit
are protected under a valid copyright.
This evidence also suffices for this Court to reject
Defendants’ argument that Plaintiff cannot claim the ID Record is
a derivative work of its Coloring Book, which is copyright
protected. The ID Record has its own copyright registration
number: TX 6-029-829. (Id.) The Coloring Book has its own
copyright registration number: TX 3-632-327. (Defs. Opp. 10.)
Each of these documents has its own valid copyright registration
certificate. Accordingly, the Court rejects Defendants’ first
argument.
Defendants’ second argument is that questions of fact
exist about the actual creation and ownership of Plaintiff’s
copyright registration. (Defs.’ Opp. 11-13.) Defendants argue
that Plaintiff rapidly submitted documents to the U.S. Copyright
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 16 of 22
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Office and knowingly and purposefully omitted the name of the
author of Plaintiff’s student identification form. However, on
October 13, 2004, Plaintiff registered the ID Record and indicated
that Student Lifeline, Inc. was the author and the work was “work
made for hire.” Subsequent documents indicated that the work was
not work for hire and that Signarino was the author of the work.
Defendants also raise issue with the fact that Signarino
testified in a deposition that Mr. Louis Refano (“Refano”) assisted
him in the creation of the child identification form. Defendants
contend that this creates an issue of fact as to who actually
authored the work. Lastly, Defendants claim that Signarino gave
inconsistent testimony as to the exact dates of creation and first
publication for the ID Record.
Defendants can rebut the presumption of the validity of
Plaintiff’s copyright registration when “other evidence in the
record casts doubt on the question,” in instances of fraud on the
Copyright Office, when work has been “copied from the public
domain,” or when the work is a “non-copyrightable utilitarian
article.” Fonar Corp., 105 F.3d at 104-05. In instances of fraud,
a defendant must present “proof of deliberate misrepresentation.”
Id.
The Court cannot say that the misstatements Defendants
point out are acts of fraud that rebut the presumption of validity
for Plaintiff’s copyright registration. First, Plaintiff remedied
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 17 of 22
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the omission of the author of the ID Record when it registered the
ID Record in October 2004, listing Student Lifeline, Inc., as
author. Second, Defendants do not present any proof that Plaintiff
intentionally misrepresented that the work was for hire or not for
hire. Third, the fact that subsequent documents list Richard
Signarino as the author is immaterial in light of the fact that
Signarino is Plaintiff’s owner and sole shareholder. Fourth,
Refano submitted an affidavit, indicating that he is one of
Plaintiff’s employees and his discretion in designing the ID Record
was “minimal.” (Refano Decl. ¶¶ 1, 7.) Furthermore, Refano does
not claim to be an author of the work; the Court fails to see why
Defendants should raise the issue.
Lastly, Defendants doubt the validity of Plaintiff’s
copyright registration because Signarino inconsistently testified
as to when exactly he created and first published the ID Record.
Defendants cite to Exhibit B, entitled “Signarino Deposition.”
However, a review of Defendants’ Exhibit does not present any
inconsistent testimony as to when Signarino first created the ID
Record or when it was first published. If anything, Signarino
indicates that he came up with the idea for the ID Record while he
was working for the FBI and designed it in the latter part of 2001.
(Defs. Opp. Ex. B, Signarino Dep. 622-25, 638.) The Court fails to
see any inconsistencies, or more importantly, any relevant or
material inconsistencies.
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 18 of 22
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Thus, the Court finds that Defendants’ second argument
does not rebut the presumption of validly attached to Plaintiff’s
copyright registration certificate. Plaintiff has established the
first element of its prima facie case of copyright infringement.
Plaintiff has a valid copyright.
2. Originality
The third argument Defendants raise in regard to
Plaintiff’s copyright surrounds the originality of Plaintiff’s
product. (Defs.’ Opp. 13-15.) Defendants contend that Signarino
saw several identification kits before creating his own; Defendants
claim that Plaintiff copied from the public domain. Signarino,
however, could not identify all of the kits he was inspired by when
he created his own ID kit. Signarino apparently examined other
kits in the marketplace to see how he may improve his own kit.
Lastly, Defendants argue that Brochure 190 and Brochure 267 are so
familiar that it renders nonsensical Plaintiff’s contention that
only Brochure 267 infringes upon Plaintiff’s copyright.
The sine qua non of copyright is originality. To qualifyfor copyright protection, a work must be original to theauthor. Original, as the term is used in copyright,means only that the work was independently created by theauthor (as opposed to copied from other works), and thatit possesses at least some minimal degree of creativity.To be sure, the requisite level of creativity isextremely low; even a slight amount will suffice. Thevast majority of works make the grade quite easily, asthey possess some creative spark, no matter how crude,humble or obvious it might be. Originality does notsignify novelty; a work may be original even though itclosely resembles other works so long as the similarityis fortuitous, not the result of copying. . . .
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 19 of 22
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Originality is a constitutional requirement. . . . Themere fact that a work is copyrighted does not mean thatevery element of the work may be protected. . . .[A]ccordingly, copyright protection may extend only tothose components of a work that are original to theauthor.
Feist Publ’ns, 499 U.S. at 345-46, 348 (citations and internal
quotations marks omitted).
“When the originality of a copyrighted work is at issue,
it becomes a question of fact for the jury to resolve.” Vargas v.
Pfizer, Inc., 418 F. Supp. 2d 369, 372 (S.D.N.Y. 2005). On a
summary judgment motion, this Court cannot conclude from competing
evidence whether a work is original or not. “A reasonable
factfinder, presented with these materials, could find either the
presence or absence of the degree of originality required to confer
copyrightability.” Id. (quoting Ulloa v. Universal Music & Video
Distrib. Corp., 303 F. Supp. 2d 409, 413-13 (S.D.N.Y. 2004).
Plaintiff contends that it has many original aspects of
the ID Record that are protected: the way Plaintiff has selected
and arranged the data categories in the ID Record, its textual and
graphical elements, and certain language located on the rear cover
of the ID Record. (Pl.’s Mem. 16-17.) In support, Plaintiff
submits various children’s identification kits created by
Plaintiff’s competitors. (Signarino Decl. Exs. D-I.)
Defendants argue that questions of fact exist as to the
originality of Plaintiff’s ID Record. Signarino testified that he
saw other kits and wanted to improve upon them. Defendants also
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 20 of 22
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argue that one of the supposed “original” components of Plaintiff’s
work is the section on children’s favorites. But Defendants claim
that is not original at all. Defendants also claim that none of
the elements of the ID Record are original; most were copied from
the public domain and/or other kits available in the marketplace.
In Vargas, the defendants made a similar argument. The
Vargas defendants argued that many works existed that were very
similar to the plaintiffs’ work, and so plaintiff’s work could not
be original. The Vargas plaintiffs countered that their work was
not similar to other works and was independently created. The
Vargas court noted that “a work may be original even though it
closely resembles other works so long as the similarity is
fortuitous, not the result of copying.” Vargas, 418 F. Supp. 2d at
373 (quoting Ulloa, 303 F. Supp. 2d 409). Notwithstanding, the
Vargas court passed on the question of originality because it found
that a question of fact existed. See id.
After reviewing the competing kits, the ID Record, and
the Defendants’ brochures, this Court cannot decide as a matter of
law whether Plaintiff’s ID Record was original. This is a question
of fact for a jury to decide. Competing evidence exists - albeit
barely - as to whether the ID Record is original to Plaintiff or
whether Plaintiff’s work is copied from other kits in the
marketplace. Accordingly, the Court must DENY Plaintiff’s motion
for summary judgment as it cannot decide as a matter of law whether
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Plaintiff’s ID Record had originality. The Court need not address
the other elements of the copyright infringement claim.
CONCLUSION
Based on the above, the Court GRANTS in part and DENIES
in part Defendants’ motion for consolidation and change of venue.
The Court consolidates the two Eastern District cases and finds the
Eastern District to be the appropriate venue for those two cases.
The Court DENIES Plaintiff’s motion for summary judgment on its
copyright infringement claim. Upon the Magistrate’s approval of
the joint pre-trial order, the parties are to request a pre-trial
conference before this Court.
SO ORDERED.
/s/ JOANNA SEYBERT Joanna Seybert, U.S.D.J.
Dated: Central Islip, New YorkFebruary 7, 2007
Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 22 of 22