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`MEMORANDUM OPINION
`AND ORDER
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`13-CV-7851 (JMF)
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`MICHAEL WARD, d/b/a BRAINTEASER
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`PUBLICATIONS,
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` Plaintiff,
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`BARNES & NOBLE, INC., et al.,
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` Defendants.
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`JESSE M. FURMAN, United States District Judge:
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`By Opinion and Order entered February 23, 2015, this Court denied in part and granted in
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`part the motion for summary judgment of Defendants Barnes & Noble, Inc., Sterling Publishing
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`Co., Inc. (“Sterling”), Francis Heaney, and Patrick Blindauer (collectively, “Defendants”) with
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`respect to Plaintiff Michael Ward’s claims for copyright infringement and trade dress
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`infringement (along with related state law claims). See Ward v. Barnes & Noble, Inc., No. 13-
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`CV-7851 (JMF), — F. Supp. 3d —, 2015 WL 765833 (S.D.N.Y. Feb. 23, 2015) (“Ward I”).
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`Plaintiff, in relevant part, alleged that Defendants — who, pursuant to a series of publishing
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`agreements between the parties, published a “Scratch and Solve” series styled on the age-old
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`game Hangman under Plaintiff’s name, and registered copyrights to the same in Plaintiff’s name
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`— infringed Plaintiff’s U.S. copyrights and a New Zealand copyright through their publication
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`of similar books under others’ names. The Court granted summary judgment with respect to
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`Plaintiff’s claims that (1) Defendants infringed his New Zealand copyright and (2) illustrations
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`and artwork published by Defendants infringed his U.S. copyrights, but denied summary
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`judgment with respect to Plaintiff’s claim that instructions in the books published by Defendants
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`03/30/2015
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`Case 1:13-cv-07851-JMF Document 51 Filed 03/30/15 Page 2 of 8
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`infringed his U.S. copyrights (the “Instructions Claim”). Defendants now move for partial
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`reconsideration of the Court’s Opinion and Order, arguing that the Court should have also
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`granted Defendants’ motion for summary judgment with respect to the Instructions Claim.
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`(Docket No. 41). Upon careful consideration of the parties’ submissions and the summary
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`judgment record, Defendants’ motion is DENIED.1
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`Motions for reconsideration are governed by Rule 59(e) of the Federal Rules of Civil
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`Procedure and Local Civil Rule 6.3, which are meant to “ensure the finality of decisions and to
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`prevent the practice of a losing party examining a decision and then plugging the gaps of a lost
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`motion with additional matters.” Medisim Ltd. v. BestMed LLC, No. 10-CV-2463 (SAS), 2012
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`WL 1450420, at *1 (S.D.N.Y. Apr. 23, 2012) (internal quotation marks omitted). “A district
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`court has broad discretion in determining whether to grant a motion [for reconsideration].”
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`Baker v. Dorfman, 239 F.3d 415, 427 (2d Cir. 2000). Such a motion “is appropriate where ‘the
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`moving party can point to controlling decisions or data that the court overlooked — matters, in
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`other words, that might reasonably be expected to alter the conclusion reached by the court.’”
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`Medisim, 2012 WL 1450420, at *1 (quoting In re BDC 56 LLC, 330 F.3d 111, 123 (2d Cir.
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`2003)). “‘The major grounds justifying reconsideration are an intervening change in controlling
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`law, the availability of new evidence, or the need to correct a clear error or prevent manifest
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`injustice.’” Terra Sec. ASA Konkursbo v. Citigroup, Inc., 820 F. Supp. 2d 558, 560 (S.D.N.Y.
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`2011) (quoting Virgin Atl. Airways, Ltd. v. Nat’l Mediation Bd., 956 F.2d 1245, 1255 (2d Cir.
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`1
`In conjunction with his opposition to Defendants’ motion, Plaintiff submitted a
`declaration with attached exhibits. (Docket No. 45). Local Civil Rule 6.3 makes clear, however,
`that on a motion for reconsideration, “[n]o affidavits shall be filed by any party unless directed
`by the Court.” Local Civ. R. 6.3. As the Court did not request affidavits — and its review on a
`motion for reconsideration is, as the Rule indicates (and for good reason), generally limited to
`the record that was before it on the original motion — the Court will not consider Plaintiff’s
`declaration or the attached exhibits.
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`2
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`Case 1:13-cv-07851-JMF Document 51 Filed 03/30/15 Page 3 of 8
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`1992)). It is well established that the rules permitting motions for reconsideration must be
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`“narrowly construed and strictly applied so as to avoid repetitive arguments on issues that have
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`been considered fully by the [C]ourt.” United States v. Treacy, No. 08-CR-0366 (RLC), 2009
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`WL 47496, at *1 (S.D.N.Y. Jan. 8, 2009) (internal quotation marks omitted).
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`Applying those standards here, Defendants’ motion fails. Defendants argue first that
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`reconsideration is warranted because the Court’s denial of summary judgment with respect to the
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`Instructions Claim conflicts with its “own factual finding that it was Sterling that had created
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`and contributed the[] instructions” in the “Scratch and Solve” series. (Mem. Law Supp. Defs.’
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`Mot. Partial Reconsideration Court’s Feb. 23, 2015 Op. & Order (Docket No. 42) (“Defs.’
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`Mem.”) 2; see also Defs.’ Reply Mem. Law Further Supp. Mot. Partial Reconsideration (Docket
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`No. 50) (“Defs.’ Reply Mem.”) 1). But the Court made no such finding; instead, it found that the
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`initial instructions, although first drafted by Sterling, were developed after a “back-and-forth”
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`between Plaintiff and the publisher. (Ward I, 2015 WL 765833, at *3). And, as Defendants
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`themselves admit, those instructions were later “edited” in ways that — as discussed below —
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`resembled instructions that Plaintiff wrote for his New Zealand Book. (Defs.’ Mem. 3 n.1).
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`Given that, and the plain language of the copyrights that Sterling itself registered — indicating
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`that Plaintiff’s authorship covered the “text” or “entire text” of the books produced under the
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`publishing agreement — the Court thus ruled that it could not conclude, as a matter of law, that
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`Defendants did not infringe Plaintiff’s U.S. copyrights in the instructions. (Id. at *8; see Decl.
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`Barry Janay Opp’n Defs.’ Mot. Summ. J. (Docket No. 32) (“Janay Decl.”), Ex. FF).
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`None of Defendants’ arguments on their motion for reconsideration warrants a different
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`conclusion now. The Copyright Act makes clear that “the certificate of a registration . . . shall
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`constitute prima facie evidence of the validity of the copyright and of the facts stated in the
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`3
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`Case 1:13-cv-07851-JMF Document 51 Filed 03/30/15 Page 4 of 8
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`certificate.” 17 U.S.C. § 410(c). As one of the “facts stated” on the certificates is that Plaintiff is
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`to be considered the author of the “text” or “entire text” of the books published by Sterling —
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`terms that necessarily include the book’s instructions — “the initial burden is on the defendant[s]
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`to introduce evidence sufficient to overcome this presumptive validity.” Van Cleef & Arpels,
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`Inc. v. Schechter, 308 F. Supp. 674, 676 (S.D.N.Y. 1969). The fact that Sterling provided an
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`initial version of the “Scratch and Solve” instructions to Plaintiff (and Plaintiff voiced objections
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`(see Decl. Louis S. Ederer Supp. Defs.’ Mot. Summ. J. (Docket No. 21) (“Ederer Decl”), Ex.
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`13)) does not, by itself, establish authorship as a matter of law, as later versions of the books’
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`instructions differed significantly from those first used in the “Scratch and Solve” series.
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`Notably, those later instructions include language used in the instructions drafted by Plaintiff for
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`his New Zealand Book. (Compare, e.g., Janay Decl., Ex. FF (instructions to Tough Hangman
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`beginning with “It’s simple, easy, and fun”) with Ederer Decl., Ex. 9 (instructions to Plaintiff’s
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`New Zealand book beginning with “It’s simple, easy and great fun”)).2
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`The Second Circuit has held that “[a]uthorship is generally a question of fact for the
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`jury.” Medforms, Inc. v. Healthcare Mgmt. Solutions, Inc., 290 F.3d 98, 110 (2d Cir. 2002).
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`Given that, and the fact that Sterling itself registered copyrights that seem to belie the argument it
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`now advances (see, e.g., Ederer Decl., Ex. 18 at 2 (noting, like previous agreements between
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`Plaintiff and Sterling, that “Publisher . . . agrees to copyright any Work in Author’s name with
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`the U.S. Copyright Office”), the Court could not, and cannot now, grant summary judgment on
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`2
`That is not to say that Plaintiff has any remaining copyright claim with respect to his New
`Zealand Book, as to which the Court already granted summary judgment based on, among other
`things, a lack of substantial similarity. See Ward I, at *5-6. Instead, the fact that later versions
`of the U.S. instructions incorporated language previously written by Plaintiff creates an issue of
`fact as to whether he authored (and hence, whether his U.S. copyright covered) those later
`instructions, giving rise to a copyright infringement claim with respect to the similar instructions
`in the other books published by Defendants. (Janay Decl., Ex. FF).
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`4
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`Case 1:13-cv-07851-JMF Document 51 Filed 03/30/15 Page 5 of 8
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`Plaintiff’s Instructions Claim. See Maurizio v. Goldsmith, 84 F. Supp. 2d 455, 466-67 (S.D.N.Y.
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`2000) (“While [Plaintiff’s] ideas and suggestions are not copyrightable, language which she
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`produced as a tangible form of expression (in the outline or draft chapters) and which was
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`intended to and did indeed merge with Goldsmith’s work in FWC may be copyrightable. . . .
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`[T]he question of whether the language was independently created by [Plaintiff] is disputed, and
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`thus one for the trier of fact.”), aff’d, 230 F.3d 518 (2d Cir. 2000); see also Ward I, 2015 WL
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`765833, at *8 (noting that “the wording of instructions for the playing of a game is itself
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`copyrightable so as to prevent a literal or closely paraphrased copying” (internal quotation marks
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`omitted)).3
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`Defendants also contend that reconsideration is warranted because one paragraph in
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`Plaintiff’s original, improperly filed Rule 56.1 statement describes the “content for which
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`Plaintiff had a United States copyright” as “the text or words that comprised the solutions to the
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`various hangman puzzles.” (Docket No. 28, ¶ 33 (emphasis added); see Defs.’ Mem. 3-4; Defs.’
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`Reply Mem. 5). This argument is unavailing for two reasons. First, on their motion for
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`summary judgment, Defendants argued only that this statement supported their argument that the
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`copyright did not extend to the illustrations in the various books, not that it also established that
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`the copyright did not extend to the books’ instructions. (Compare Defs.’ Reply Mem. Law
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`3
`The Court notes that Defendants have never argued that Plaintiff’s copyright claim fails
`because he and Defendants (or Sterling specifically) were joint authors. See Kwan v. Schlein,
`634 F.3d 224, 229 (2d Cir. 2011) (“[B]ecause coauthors cannot sue one another for copyright
`infringement, [Plaintiff] cannot recover unless [he or] she was the sole author” of the disputed
`work (internal citations omitted)); cf. Thomson v. Larson, 147 F.3d 195, 206 (2d Cir. 1998)
`(noting that this Circuit “has not decided whether a person who makes a non-de minimis
`copyrightable contribution but cannot meet the mutual intent requirement of co-authorship,
`retains, in the absence of a work-for-hire agreement or of any explicit contractual assignment of
`the copyright, any rights and interests in his or her own contribution.”).
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`5
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`Case 1:13-cv-07851-JMF Document 51 Filed 03/30/15 Page 6 of 8
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`Further Supp. Mot. Summ. J. (Docket No. 35) (“Defs.’ Reply Summ. J. Mem.”) 5, with id. at 6
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`n.11). Defendants’ new argument that this statement should also be considered a concession that
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`the instructions are not part of the “text” or “entire text” in which Plaintiff owned copyrights —
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`despite the plain language of the copyright registrations indicating otherwise — is therefore not a
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`proper ground for seeking reconsideration of the Court’s prior order. See Gonzalez-Blanco v.
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`Bank of Am., N.A., No. 11-CV-7139 (TPG), 2012 WL 19383, at *1 (S.D.N.Y. Jan. 3, 2012) (“A
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`motion for reconsideration should be denied where the party seeking consideration merely raises
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`new arguments and issues it could have raised on the underlying motion.”); accord Weiss v. El Al
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`Israel Airlines, Ltd., 471 F. Supp. 2d 356, 359 (S.D.N.Y. 2006).
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`Second, and in any event, Defendants still must overcome the presumption of authorship
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`established by the copyright registrations Sterling filed. See Van Cleef & Arpels, 308 F. Supp. at
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`676. One sentence in an improperly filed Rule 56.1 statement (that Defendants themselves
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`fought vehemently to exclude and that the Court ordered Plaintiff to re-file), on a point that
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`Plaintiff in fact disputes in his operative Rule 56.1 Statement, is not enough to defeat that
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`presumption. See Huurman v. Foster, No. 07-CV-9326 (MHD), 2010 WL 2545865, at *11
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`(S.D.N.Y. June 21, 2010) (“A party can rebut the presumption of validity by providing evidence
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`of a material issue of fact concerning the copyright. If the presumption of validity is overcome,
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`the burden of proof shifts back to the party claiming the copyright to prove that it has original
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`and copyrightable subject matter and owns the same.” (internal citation and quotation marks
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`omitted)). (Docket Nos. 30-31; compare Docket No. 28, ¶ 33 with Docket No. 33, ¶ 27 (denying
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`that Plaintiff’s U.S. Copyright covered “the ‘text’, or words, that comprised the solutions to the
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`various Hangman puzzles”). And while the Court did reference Plaintiff’s statement in rejecting
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`his argument that his registered copyrights covered the interior artwork and illustrations of the
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`6
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`Case 1:13-cv-07851-JMF Document 51 Filed 03/30/15 Page 7 of 8
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`“Scratch and Solve” series, Ward I, 2015 WL 765833, at *7, the statement was not essential to
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`the Court’s conclusion. Instead, the Court rejected Plaintiff’s U.S. copyright claim based on the
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`“Scratch and Solve” illustrations principally because the plain language of the copyright
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`registrations indicated that his authorship extended only as far as the “text” — the same reason
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`the Court could not grant summary judgment on Plaintiff’s Instructions Claim. See id. at *7-8.
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`Plaintiff’s claim of infringement with respect to the instructions is far from
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`overwhelming, as there is certainly evidence in the record (including, perhaps, Plaintiff’s initial
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`Rule 56.1 Statement — the admissibility of which the Court need not address here) from which a
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`reasonable jury could conclude that Sterling was the author. But given — among other things —
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`Sterling’s own statements in the copyright registrations and the similarities between the
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`instructions at issue here and in instructions in Plaintiff’s New Zealand book, the issue of
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`authorship is one for the jury to decide at trial, not for this Court to decide on summary
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`judgment. See Medforms, 290 F.3d at 110; see also Maurizio, 84 F. Supp. 2d at 467 (“[T]he
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`question of whether the language was independently created by [Plaintiff] is disputed, and thus
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`one for the trier of fact.”); Sutton Imp.-Exp. Corp. v. Starcrest of Calif., 762 F. Supp. 68, 70
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`(S.D.N.Y. 1991) (“Authorship is . . . an issue of fact precluding summary judg[]ment.”); Morita
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`v. Omni Publications Int’l, Ltd., 741 F. Supp. 1107, 1112-13 (S.D.N.Y. 1990) (denying summary
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`judgment because, among other things, the parties raised “genuine issues of material fact with
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`respect to Morita’s and Kan’s relative contributions to the project” that was the subject of the
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`copyright infringement claim), vacated by consent judgment, 760 F. Supp. 45 (S.D.N.Y. 1991).
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`Notably, the case Defendants rely on most heavily in their reply memorandum (Defs.’ Reply
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`Mem. 7-8) — Defendants insist that Plaintiff’s claim should be dismissed because he, like the
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`plaintiff in that case, did not author the disputed work — was decided after a bench trial, not on a
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`7
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`Case 1:13-cv-07851-JMF Document 51 Filed 03/30/15 Page 8 of 8
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`motion for summary judgment. See Richard J. Zitz, Inc. v. Pereira, No. 99-9399, 225 F.3d 646,
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`2000 WL 1239830, at *3, 5 (2d Cir. Aug, 31, 2000) (summary order); see also N. Forest Dev.,
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`LLC v. Walden Ave. Realty Assoc., LLC, No. 06-CV-378 (JJM) (RJA), 2009 WL 5959961, at *3
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`(W.D.N.Y. July 22, 2009) (“Zitz was decided following a bench trial, not on a motion for
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`summary judgment. Based on the record before [the Court], [it] cannot determine as a matter of
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`law whether North Forest is or is not the author of the copyrighted drawings.”).
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`For the foregoing reasons, Defendants’ motion for reconsideration is DENIED. Pursuant
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`to the Court’s Order of March 4, 2015 (Docket No. 44), the parties’ Joint Pretrial Order and
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`related materials — the substance of which are outlined in the Court’s summary judgment
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`opinion, see Ward I, 2015 WL 765833, at *11, and the Court’s Individual Rules and Practices —
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`are due twenty-one days from the date of this Memorandum Opinion & Order. Unless the Court
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`orders otherwise for good cause shown, the parties shall be ready for trial two weeks thereafter.
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`And finally, if the parties are interested in a referral to Magistrate Judge Maas for settlement
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`purposes, they shall so advise the Court by joint letter as soon as possible.
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`The Clerk of Court is directed to terminate Docket No. 41.
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`SO ORDERED.
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`Date: March 30, 2015
`New York, New York
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