Case 1:04-cv-00867-DNH-RFT Document 239 Filed 07/18/11 Page 1 of 17
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF NEW YORK
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`BRUCE CHAPMAN and HANDLE WITH CARE
`BEHAVIOR MANAGEMENT SYSTEM, INC.,
`
` -v-
`
` Plaintiffs,
`
`
` 1:04-CV-867
`
`NEW YORK STATE DIVISION FOR YOUTH;
`NEW YORK STATE DEPARTMENT OF SOCIAL
`SERVICES; NEW YORK STATE OFFICE OF
`CHILDREN & FAMILY SERVICES; JOHN JOHNSON,
`Commissioner of New York State Office of Children
`and Family Services and former Commissioner of the
`New York State Division for Youth, in his official and
`individual capacity; MARGARET DAVIS, former
`Director of Training for the New York State Division
`for Youth and former Director of Training for New York
`State Office of Children and Family Services, in her
`official and individual capacity; PATSY MURRAY, former
`Associate Training Technician for the New York State
`Division for Youth and current Trainer for New York State
`Office of Children and Family Services, in her official and
`individual capacity; CORNELL UNIVERSITY; JEFFREY
`LEHMAN, President of Cornell University, in his official
`and individual capacity; DR. HUNTER RAWLINGS, III,
`former President of Cornell University, in his official and
`individual capacity; NEW YORK STATE COLLEGE OF
`HUMAN ECOLOGY; FAMILY LIFE DEVELOPMENT
`CENTER; RESIDENTIAL CHILD CARE PROJECT;
`THERAPEUTIC CRISIS INTERVENTION; MARTHA
`HOLDEN, Project Director of the Residential Child Care
`Project and Therapeutic Crisis Intervention Trainer and
`Coordinator, in her official and individual capacity;
`MICHAEL NUNNO, Project Director of the Residential
`Child Care Project and Therapeutic Crisis Intervention
`Trainer and Coordinator, in his official and individual
`capacity; HILLSIDE CHILDREN'S CENTER; DENNIS
`RICHARDSON, President and CEO of Hillside Children's
`Center, in his official and individual capacity; DOUGLAS
`BIDLEMAN, Employee of Hillside Children's Center and
`Therapeutic Crisis Intervention Trainer, in his official and
`individual capacity; and JOHN DOE 1 through 99,
`
` Defendants.
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`

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`Case 1:04-cv-00867-DNH-RFT Document 239 Filed 07/18/11 Page 2 of 17
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`APPEARANCES:
`
`OFFICE OF HILARY ADLER
`Attorney for Plaintiffs
`184 McKinstry Road
`Gardiner, NY 12525
`
`OFFICE OF ALAN N. KACHALSKY
`Attorney for Plaintiffs
`800 Westchester Avenue
`Suite S-608
`Rye Brook, NY 10573
`
`OF COUNSEL:
`
`HILARY ADLER, ESQ.
`
`ALAN N. KACHALSKY, ESQ.
`
`HON. ERIC T. SCHNEIDERMAN DOUGLAS J. GOGLIA, ESQ.
`Attorney General of the
`Asst. Attorney General
` State of New York
`Attorney for Defendants NYS Division for Youth;
` NYS Department of Social Services; NYS
` Office of Children & Family Services; John
` Johnson; Margaret Davis; and Patsy Murray
`Department of Law
`The Capitol
`Albany, NY 12224
`
`NELSON E. ROTH, ESQ.
`
`OFFICE OF UNIVERSITY COUNSEL
`Attorneys for Cornell University; Jeffrey Lehman;
` Dr. Hunter Rawlings, III; NYS College of
` Human Ecology; Family Life Development
` Center; Residential Child Care Project;
` Therapeutic Crisis Intervention; Martha Holden;
` and Michael Nunno
`300 CCC Building
`Garden Avenue
`Ithaca, NY 14853
`
`JOHN R. PETRONE, ESQ.
`
`PETRONE, PETRONE LAW FIRM
`Attorneys for Hillside Children's Center; Dennis
` Richardson; and Douglas Bidleman
`1624 Genesee Street
`Utica, NY 13502
`
`DAVID N. HURD
`United States District Judge
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`Case 1:04-cv-00867-DNH-RFT Document 239 Filed 07/18/11 Page 3 of 17
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`MEMORANDUM-DECISION AND ORDER
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`I. INTRODUCTION
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`Plaintiffs, Handle With Care Behavior Management System, Inc. ("HWC") and its
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`president, Bruce Chapman ("Chapman," collectively "plaintiffs"), market a behavior
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`management program that is used by professionals who must physically restrain others.
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`Plaintiffs have brought this action against three sets of defendants—the "state defendants,"
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`the "Cornell defendants," and the "Hillside defendants"—regarding the alleged misuse of
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`their copyrighted program materials and manipulation of the market for their products.
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`Plaintiffs seek monetary damages and injunctive relief.
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`The state defendants include: New York State Office of Children and Family Services
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`("OCFS"), which, in 1998, assumed the functions of defendants New York State Division for
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`Youth ("DFY") and New York State Department of Social Services ("DSS"); John Johnson
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`("Johnson"), Commissioner of OCFS; and Margaret Davis ("Davis") and Patsy Murray
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`("Murray"), former OCFS employees. The Cornell defendants include: Cornell University
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`itself; Jeffrey Lehman, the University's former president; Dr. Hunter Rawlings, III, the
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`University's current president; New York State College of Human Ecology ("the College"), a
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`statutory college of the State University of New York; the Family Life Development Center,
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`the Residential Child Care Project ("RCCP"), and Therapeutic Crisis Intervention ("TCI")—
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`alleged subsidiaries of the College; and Martha Holden and Michael Nunno, employees of
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`RCCP and TCI. The Hillside defendants include: the Hillside Children's Center ("HCC"), a
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`private childcare provider and residential treatment center; Dennis Richardson, HCC's
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`president; and Douglas Bidleman, an HCC employee.
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`Case 1:04-cv-00867-DNH-RFT Document 239 Filed 07/18/11 Page 4 of 17
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`On September 29, 2005, defendants' motion to dismiss was granted and the
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`complaint, which contained three federal causes of action and seven state causes of action,
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`was dismissed in its entirety. Chapman v. N.Y. Div. for Youth, 2005 WL 2407548 (N.D.N.Y.
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`2005). Plaintiffs appealed, and, on October 14, 2008, the Second Circuit reinstated only the
`1
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`federal copyright infringement cause of action against the state defendants, noting:
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` The district court dismissed plaintiffs' copyright claim on the basis that
`the contract at issue unambiguously granted the state defendants the right
`to copy plaintiffs' materials indefinitely. We disagree with that conclusion,
`find the contract ambiguous, and remand the case to the district court to
`determine the duration of the license to copy plaintiffs' materials granted
`under the contract.
`
`Chapman v. N.Y. Div. for Youth, 546 F.3d 230, 234 (2d Cir. 2008), cert. denied, 130 S. Ct.
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`552 (2009).
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`Therefore, the only cause of action at issue is the federal claim for copyright
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`infringement in violation of the Copyright Act of 1976, 17 U.S.C. §§ 101–1332 (2006), against
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`the state defendants. Further, the only issue to be determined is the duration of the license
`2
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`to copy plaintiffs' training materials.
`
`1
` It is noted that Chapman also filed a qui tam action on December 30, 2004, asserting eighteen
`causes of action under the False Claims Act against a different group of state and Cornell defendants.
`The United States of America declined to intervene in that action, which was based on the same business
`relationship and facts at issue here. That complaint was dismissed in its entirety on February 16, 2010.
`United States ex rel. Chapman v. Office of Children & Family Servs. of N.Y., No. 1:04-CV-1505, 2010 W L
`610730 (N.D.N.Y. 2010), aff'd, Chapman v. Office of Children & Family Servs. of N.Y., No. 10-967-CV,
`2011 W L 2163997 (2d Cir. 2011) (summary order).
`
`2
` Subsequent orders, dated May 1 and May 12, 2009, reinstated the previously dismissed
`pendent state claims but stayed further action and discovery on these claims. See Dkt. Nos. 143, 148.
`These orders also made clear that if the state defendants' expected motion for summary judgment on the
`one remaining federal claim is granted, supplemental jurisdiction over the state claims would not be
`exercised. If, however, the state defendants' motion for summary judgment is denied, supplemental
`jurisdiction would be exercised and discovery would be reopened on the state claims at that time.
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`Case 1:04-cv-00867-DNH-RFT Document 239 Filed 07/18/11 Page 5 of 17
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`The state defendants have moved for summary judgment, pursuant to Federal Rule
`3
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`of Civil Procedure 56, regarding the federal copyright infringement claim. Dkt. No. 217.
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`Plaintiffs oppose the motion and have cross-moved for summary judgment. Dkt. No. 227.
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`The motions were considered on submit.
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`II. FACTUAL BACKGROUND
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`Unless otherwise noted, the following facts are undisputed. HWC is a New York
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`corporation that provides crisis intervention services and trains childcare workers in physical
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`restraint techniques. On June 7, 1984, Chapman—founder and president of HWC—filed
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`with the United States Copyright Office a manual entitled "Handle With Care - A
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`Revolutionary Approach to Behavior Management" ("the 1984 Manual").
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`DFY was a New York state agency that, until 1998, was responsible for the care and
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`welfare of juveniles in the state's custody. DFY was obligated by law to train staff to use
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`proper techniques to restrain juveniles in certain circumstances. DSS was a New York state
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`agency that, until 1998, licensed, regulated, and supervised childcare agencies within the
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`state. In 1998, DFY and DSS merged into OCFS, which assumed the functions of the two
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`agencies. At that time, Johnson, who was the Director of DFY, became Commissioner of
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`OCFS. Davis, who was the Director of Training at DFY, became Assistant Director of
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`Training at OCFS but has since retired. Murray, who was Associate Training Technician for
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`DFY, served as a trainer at OCFS from 1998 until 2003.
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`The interaction between the parties began in late 1987 when DFY and Chapman
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`entered into a contract under which Chapman trained DFY staff in physical restraint
`
`3
` As the sole federal claim at issue is asserted against the state defendants only, all references to
`"defendants" hereinafter is to be understood as a reference to the state defendants.
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`Case 1:04-cv-00867-DNH-RFT Document 239 Filed 07/18/11 Page 6 of 17
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`techniques between January 1 and March 31, 1988 ("the 1987 Contract"). This contract
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`required Chapman to furnish DFY with a copy of the 1984 Manual, which DFY was permitted
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`to reproduce "in whole or in part as required." The contract also required Chapman to
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`provide a training video "to be used by [DFY]'s master trainers in conducting training
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`programs for facility staff." Thereafter, Davis incorporated descriptions and illustrations of
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`several techniques from the 1984 Manual into an updated DFY trainers' manual. To
`4
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`accurately incorporate these techniques into the DFY manual, Davis attended and took notes
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`at Chapman's training sessions. Moreover, a DFY employee created a video of Chapman
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`training DFY staff. Davis provided Chapman with a copy of the updated DFY manual in
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`March 1988 ("the 1988 Manual"). Thereafter, Chapman used the 1988 Manual to train other
`5
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`clients.
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`In April 1996 Chapman sent a letter to Davis in which he advised, inter alia, that he
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`had modified and improved his physical restraint techniques. In November 1996 DFY posted
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`a Request For Bid ("RFB") seeking a vendor to recertify DFY trainers in restraint techniques.
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`DFY specifically sought an instructor to update staff on techniques used in the HWC
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`program. The RFB also indicated that the winning bidder must provide DFY with the rights to
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`reproduce any and all training materials. HWC submitted the only bid, which was signed by
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`Chapman. In a letter accompanying this bid, Chapman recommended annual recertification
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`4
` Defendants specifically acknowledge incorporating the following techniques into the DFY
`trainers' manual: the "Personal Defense System," the "Primary Restraint Technique," the "Two Person
`Escort," and the "Team Restraint System." Plaintiffs argue that the illustrations and accompanying text of
`additional techniques from the 1984 Manual were also incorporated into the updated DFY manual.
`
`5
` Plaintiffs maintain that this revised manual was merely the 1984 Manual that Davis had
`"retypeset" and was therefore a "derivative" of the 1984 Manual.
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`Case 1:04-cv-00867-DNH-RFT Document 239 Filed 07/18/11 Page 7 of 17
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`of trainers but noted that he was not seeking a contract obligating DFY to recertify its trainers
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`on an annual basis.
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`HWC's bid was accepted, and a contract was executed between Chapman and DFY
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`in April 1997 ("the 1997 Contract"). Under the 1997 Contract, Chapman was to update and
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`recertify DFY staff in HWC's restraint techniques between May 1 and August 31, 1997. The
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`contract contained a provision allowing for the extension of the contract for two additional
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`four-month terms upon written consent of the parties. Pursuant to the agreement, Chapman
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`provided DFY with updated HWC instructor and participant manuals as well as an
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`instructional video ("the 1995 Video"). Labels on these materials indicated that they were
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`copyrighted by HWC and could not be reproduced or transmitted without written permission
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`of HWC. The 1997 Contract, drafted by DFY, indicated that DFY had "the right to reproduce
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`all training materials."
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`Chapman then drafted a separate agreement between HWC and each participant in
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`the training program. This agreement specified that the participant's certification to train
`6
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`other DFY staff in HWC's techniques expired after one year. The certificates Chapman
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`provided to each participant upon completion of the program also indicated that they were
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`certified to teach the HWC program for one year only. DFY continued to reproduce and use
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`HWC's training materials after the one-year certification period expired in July 1998.7
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`In October 1998 Chapman filed a revised version of the 1984 Manual with the United
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`States Copyright Office ("the 1998 Manual"). Chapman acknowledges that approximately
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`6
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` Defendants Davis and Murray each signed one of these separate participant agreements.
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`7
` The last training session conducted pursuant to the 1997 Contract took place on July 23, 1997.
`Therefore, all DFY trainers' certifications expired, according to Chapman's imposed one-year limitation, on
`July 23, 1998.
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`Case 1:04-cv-00867-DNH-RFT Document 239 Filed 07/18/11 Page 8 of 17
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`four pages of the 1998 Manual were not written by him. These pages include material
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`provided to Chapman by DFY.
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`III. DISCUSSION
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`Plaintiffs' copyright infringement claim concerns defendants' use of the 1984 Manual,
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`the 1995 Video, the 1998 Manual, and derivative works thereof. In their motion for summary
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`judgment, defendants argue that: (1) they are entitled to Eleventh Amendment immunity; (2)
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`the HWC manuals at issue were coauthored by DFY and Davis; (3) plaintiffs authorized DFY
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`to reproduce and use the materials at issue; and (4) the doctrines of laches and equitable
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`estoppel preclude plaintiffs' copyright claim. Plaintiffs assert that they are entitled to
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`summary judgment because: (1) defendants waived Eleventh Amendment immunity; (2)
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`defendants were only authorized to copy and use the materials at issue for one year after the
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`training sessions ; and (3) DFY employees, including Davis, did not coauthor the materials at
`8
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`issue.
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`A. Motion for Summary Judgment—Legal Standard
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`The entry of summary judgment is warranted when "the pleadings, depositions,
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`answers to interrogatories, and admissions on file, together with the affidavits . . . show that
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`there is no genuine issue as to any material fact and that the moving party is entitled to a
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`judgment as a matter of law." Fed. R. Civ. P. 56(c); see Celotex Corp. v. Catrett, 477 U.S.
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`317, 322, 106 S. Ct. 2548, 2552 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247,
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`106 S. Ct. 2505, 2509–10 (1986). A fact is "material" for purposes of this inquiry if it "might
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`8
` In their appeal of the motion to dismiss, plaintiffs argued that the license to copy the materials,
`granted in the 1997 Contract, ended 120 days after the agreement commenced. Chapman, 546 F.3d at
`236. In the current motion for summary judgment, plaintiffs maintain that the license ended one year after
`the training sessions were held.
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`Case 1:04-cv-00867-DNH-RFT Document 239 Filed 07/18/11 Page 9 of 17
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`affect the outcome of the suit under the governing law." Anderson, 477 U.S. at 248, 106 S.
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`Ct. at 2510; see also Jeffreys v. City of New York, 426 F.3d 549, 553 (2d Cir. 2005). A
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`material fact is genuinely in dispute "if the evidence is such that a reasonable jury could
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`return a verdict for the nonmoving party." Anderson, 477 U.S. at 248, 106 S. Ct. at 2510.
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`When summary judgment is sought, the moving party bears the initial burden of
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`demonstrating that there is no genuine issue of material fact to be decided with respect to
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`any essential element of the claim. Id. at 250 n.4, 106 S. Ct. at 2511 n.4. The failure to
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`meet this burden warrants denial of the motion. Id. In the event this initial burden is met, the
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`opposing party must show, through affidavits or otherwise, that there is a material issue of
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`fact for trial. Id. at 250, 106 S. Ct. at 2511; Fed. R. Civ. P. 56(e).
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`When deciding a summary judgment motion, a court must resolve any ambiguities
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`and draw all inferences from the facts in a light most favorable to the nonmoving party.
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`Jeffreys, 426 F.3d at 553. Summary judgment is inappropriate where "review of the record
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`reveals sufficient evidence for a rational trier of fact to find in the [non-movant's] favor."
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`Treglia v. Town of Manlius, 313 F.3d 713, 719 (2d Cir. 2002) (citation omitted); see also
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`Anderson, 477 U.S. at 250, 106 S. Ct. at 2511 (summary judgment is appropriate only when
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`"there can be but one reasonable conclusion as to the verdict").
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`B. Copyright Infringement Claim
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`Defendants do not dispute that they reproduced and used HWC's copyrighted training
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`materials. Chapman, 546 F.3d at 235. The only issue is whether they had plaintiffs'
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`Case 1:04-cv-00867-DNH-RFT Document 239 Filed 07/18/11 Page 10 of 17
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`permission to do so. Defendants maintain that the 1987 Contract provided them with an
`9
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`unrestricted license to reproduce HWC's training materials as needed. Plaintiffs
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`acknowledge that the 1987 and 1997 Contracts provided defendants with a license to copy
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`the materials but now argue that the licenses were intended to run concurrent with the DFY
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`trainers' certification and expire one year after the 1988 and 1997 training sessions were
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`completed.
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`1. Applicable Law
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`It is well-settled that "[a] copyright owner who grants a nonexclusive license to use his
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`copyrighted materials waives his right to sue the licensee for copyright infringement."
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`Graham v. James, 144 F.3d 229, 236 (2d Cir. 1998). Where the scope of a copyright license
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`is in question, "the copyright owner bears the burden of proving that the defendant's copying
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`was unauthorized." Bourne v. Walt Disney Co., 68 F.3d 621, 631 (2d Cir. 1995). "Copyright
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`disputes involving only the scope of the alleged infringer's license present the court with a
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`question that essentially is one of contract: whether the parties' license agreement
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`encompasses the defendant's activities." Id.
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`When interpreting a contract, the "key inquiry . . . is whether it is ambiguous with
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`respect to the issue disputed by the parties." Bank of N.Y. v. First Millennium, Inc., 607 F.3d
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`905, 914 (2d Cir. 2010). A contract is ambiguous if its terms "could suggest more than one
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`9
` W hile the two previous orders in this case analyzed the 1997 Contract, defendants now assert
`that the 1987 Contract provided them with an unrestricted license to reproduce HW C's training materials.
`Defs.' Mem. of Law, Dkt. No. 219, at 27. This does not alter the current analysis as the 1987 and 1997
`Contracts are substantially similar. See generally Davis Decl., Exs. F & N, Dkt. Nos. 217-17, 217-25
`("1987 Contract" and "1997 Contract" respectively). Neither contract contains an explicit provision
`regarding the duration of the license conferred to defendants. As the Second Circuit deemed the 1997
`Contract ambiguous as to the length of the license, so too is the 1987 Contract. Therefore, the following
`analysis will consider extrinsic evidence related to both contracts.
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`meaning when viewed objectively by a reasonably intelligent person who has examined the
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`context of the entire integrated agreement and who is cognizant of the customs, practices,
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`usages and terminology as generally understood in the particular trade or business." Id.
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`(internal quotation marks omitted). "Although a determination that a contract is ambiguous
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`ordinarily requires denial of summary judgment, the court may nonetheless grant summary
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`judgment where the extrinsic evidence illuminating the parties' intended meaning of the
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`contract is so one-sided that no reasonable person could decide to the contrary." N.Y.
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`Marine & Gen. Ins. Co. v. Lafarge N. Am., Inc., 599 F.3d 102, 115 (2d Cir. 2010) (internal
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`quotation marks omitted).
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`The Second Circuit concluded that the 1997 Contract was ambiguous as to the
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`duration of the license and remanded the matter for consideration of extrinsic evidence
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`related to the parties' intent. Chapman, 546 F.3d at 237. Defendants argue that by
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`reinstating the copyright claim and ordering consideration of extrinsic evidence, the Second
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`Circuit has "inexplicably overlooked" a "fundamental tenet of copyright jurisprudence." Defs.'
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`Mem. of Law at 29. Specifically, defendants point out that where, as here, "a contract is
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`silent as to the duration of the grant of copyright rights, the contract is read to convey rights
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`for the initial copyright period." P.C. Films Corp. v. MGM/UA Home Video Inc., 138 F.3d 453,
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`458 (2d Cir. 1998).
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`Applying such case law would fill the missing duration term in the 1987 and 1997
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`Contracts and compel a finding that defendants' license lasted well after the one-year
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`limitation suggested by plaintiffs.
`10
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` While this would end the inquiry and result in the grant of
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`summary judgment in defendants' favor, an in-depth discussion of P.C. Films and its
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`applicability is unnecessary because, as discussed below, the pertinent extrinsic evidence
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`shows that no reasonable person could conclude the licenses were limited to one year as
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`plaintiffs allege.
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`2. Extrinsic Evidence
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`Both the 1987 and 1997 Contracts are ambiguous as to how long the licenses
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`conferred in each were intended to last. There is no provision specifically limiting the
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`duration of the licenses. Instead, the language of the contracts, coupled with the behavior of
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`and interaction between the parties, evidences an understanding that the licenses were
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`intended to be open-ended.
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` 11
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`The 1987 Contract required Chapman to provide a training video "to be used by
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`[DFY]'s master trainers in conducting training programs for facility staff." 1987 Contract, § II.
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`Considering Chapman was to train certain DFY employees as "master trainers" who would,
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`in turn, train other DFY employees in proper restraint techniques, the only reasonable
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`interpretation of this provision is that defendants were permitted to use the training video well
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`after Chapman completed his training sessions in 1988. Indeed, it defies logic to certify
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`master trainers—who would be charged with training other DFY staff—but not provide them
`
`10
` However, defendants' assertion that the 1987 Contract provided a "perpetual" license is
`rejected because Chapman did not possess perpetual copyright rights over the training materials. The
`Copyright Act dictates that "[c]opyright in a work created on or after January 1, 1978, subsists from its
`creation and . . . endures for a term consisting of the life of the author and 70 years after the author's
`death." 17 U.S.C. § 302(a) (2006). At most, therefore, the 1987 Contract could have conveyed a license
`lasting up to seventy years after Chapman's death.
`
`11
` As explained above, however, the duration of the licenses were legally limited to the length of
`time Chapman held the copyright rights to the materials. Supra note 10.
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`access to the materials they need to perform such training. Noticeably absent from the 1987
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`Contract is any provision obligating defendants to retain plaintiffs' services on an annual
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`basis to recertify the master trainers. Plaintiffs do not put forth anything to suggest that
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`defendants were prohibited from reproducing and using the materials to train new DFY
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`employees on an ongoing basis.
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`In fact, Chapman himself admitted as much during a sworn deposition relating to a
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`separate litigation in 1999.
`
`12
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` Chapman acknowledged that the updated 1988 Manual was
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`rewritten with DFY's "help." Goglia Decl., Ex. F, Dkt. No. 217-7, at 22: 16–17. When asked
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`what DFY received in return for such assistance, Chapman replied: "They got a manual that
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`they could have as part of their curriculum." Id. at 25: 12–14. Chapman further claimed that
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`the 1987 Contract placed no written or verbal restrictions on DFY's use of the HWC manual,
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`"[o]ther than my copyright." Id. at 26: 15–21. This testimony reflects an understanding that
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`DFY could reproduce and use the training materials as needed, subject only to the existence
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`of Chapman's copyright. Therefore, as long as Chapman held the copyright rights to this
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`material, defendants could only use it for their own training purposes—which is exactly what
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`they are alleged to have done.
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`Moreover, there is nothing in the record indicating that plaintiffs complained of
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`defendants' continued use of the materials or sought to prevent such use after the purported
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`one-year limitation period ended in 1989. After Chapman completed the 1988 training
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`sessions, the next contact between the parties was when he sent a letter to Davis in April
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`1996 advising that he had revised and improved the training program. See Davis Decl., Ex.
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`12
` Plaintiffs filed a similar copyright infringement action against different defendants in the district
`court of Nebraska in October 1998. See Goglia Decl., Exs. D & E, Dkt. Nos. 217-5, 217-6.
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`J, Dkt. No. 217-21. During the intervening eight years, plaintiffs never insisted that
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`defendants stop using the training materials, nor did they advise that defendants were out of
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`compliance with the program because they failed to recertify their staff on an annual basis.
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`Instead, in his April 1996 letter, Chapman noted that annual recertification was merely a
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`"recommendation" and sought a new contract to update the existing trainers on the improved
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`HWC program. Id. Defendants' continued reproduction and use of HWC's training materials
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`is not mentioned anywhere in this letter. See id.
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`Given this historic interaction between the parties, plaintiffs were aware that
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`defendants would continue to reproduce and utilize the training materials well after any
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`purported one-year, or 120-day, limitation ended. However, while negotiating the 1997
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`Contract, plaintiffs did not insist on the inclusion of a provision requiring annual recertification
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`or an express limit on how long defendants would be permitted to reproduce and use the
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`materials.
`13
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` Instead, Chapman specifically advised defendants, in a letter accompanying his
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`bid for the 1997 Contract, that he was not seeking a contract obligating DFY to recertify its
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`trainers on an annual basis. See Davis Decl., Ex. M, Dkt. No. 217-24. The only documented
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`consequence of defendants' failure to keep their trainers' certifications current was the loss of
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`Chapman's "free expert testimony." Id. Moreover, the 1997 Contract did not require
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`defendants to pay a monthly or annual fee for continued access to the training materials.
`
`13
` Any suggestion that Chapman was unable to negotiate with DFY at arm's-length or that DFY
`dictated the terms of the 1997 Contract is unpersuasive. Chapman was the founder and president of
`HW C, had apparently entered into service contracts nationwide, and HW C's was the only bid submitted in
`response to defendants' RFB. Further, Chapman negotiated other specific details of the 1997 Contract,
`such as the number of participants to be permitted in each class. See Davis Decl., Ex. M, Dkt. No. 217-
`24.
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`Case 1:04-cv-00867-DNH-RFT Document 239 Filed 07/18/11 Page 15 of 17
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`Nor did the provision allowing for an extension of the contract for two additional four-month
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`terms reference the training materials.
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`Plaintiffs claim that the participant agreements, which Chapman drafted and required
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`each participant to sign, evidence an intent to limit the license granted in the 1997 Contract
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`to one year after the completion of the training sessions. However, these agreements were
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`made between Chapman and individual DFY employees after the 1997 Contract had been
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`entered into. They therefore shed no light on the intent of the parties as the 1987 or 1997
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`Contracts were being negotiated. Moreover, there is nothing in the participant agreements
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`that requires defendants to bring Chapman back for annual recertifications, prohibits the use
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`of the training materials by non-certified DFY staff (or staff whose certification had lapsed
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`according to plaintiffs' imposed one-year limitation), or otherwise modifies the 1997 Contract
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`in any way. While these agreements evidence an understanding that the participants would
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`be certified to teach the "Basic Training Program" for only one year, there is no indication
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`that the parties intended the use of HWC's training materials to run concurrently with the
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`certification of the participants. Instead, these agreements were intended to guard plaintiffs
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`from liability for any subsequent litigation stemming from the conduct of DFY employees'
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`whose certification had lapsed. In their answers to defendants' interrogatories, plaintiffs
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`characterize the participant agreements as "release of liability waiver[s]." See Goglia Decl.,
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`Ex. A, Dkt. No. 217-2, 9.
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`Finally, after he completed the training sessions in July 1997, Chapman did not
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`contact defendants again until November 2002, when he informed Davis that OCFS's license
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`and certifications had "lapsed." Chapman Decl., Dkt. No. 228, ¶ 109. Chapman then sent a
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`"Cease and Desist Notice" to OCFS in December 2002. Id. ¶ 110. This belies plaintiffs'
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`claim that the copyright license, admittedly granted by the 1997 Contract, ended in 1998.
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`Plaintiffs offer no explanation as to why they did not take any action for over four years,
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`during which defendants continued to use the HWC training materials, and derivatives
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`thereof, to train their staff.
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`The only reasonable conclusion is that the 1997 license, like the one conveyed in the
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`1987 Contract, permitted defendants to use the training materials as needed, subject only to
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`the existence of Chapman's copyright. Accordingly, defendants' motion for summary
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`judgment will be granted as to the federal copyright claim.14
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`IV. CONCLUSION
`
`In both the 1987 and 1997 Contracts, plaintiffs granted defendants a license to copy
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`and use HWC's training materials. Both contracts are ambiguous with respect to the duration
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`and limits of these licenses. However, the extrinsic evidence clearly demonstrates that the
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`parties intended to allow the defendants to reproduce and use the training materials as long
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`as Chapman held the copyright rights to such materials, and no reasonable factfinder could
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`decide to the contrary. Defendants copied these materials and continued to utilize them to
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`train their staff, as contemplated by the licenses. Plaintiffs therefore fail to meet their burden
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`of proving that the defendants' use of the copyrighted materials exceeded the licenses
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`conferred or was otherwise unauthorized.
`
`14
` The state defendants also argue that they are entitled to immunity under the Eleventh
`Amendment. Plaintiffs maintain that the defendants waived this immunity by enacting Section 8 of the
`New York State Court of Claims Act, including choice-of-law and non-arbitration clauses in the 1997
`Contract, and attempting to bring a counterclaim based on OCFS's alleged co-authorship of the training
`manual. Because the copyright claim will be dismissed on the merits, it need not be determined whether
`the