Case 1:13-cv-07851-JMF Document 51 Filed 03/30/15 Page 1 of 8
`
`
`
`
`
`
`MEMORANDUM OPINION
`AND ORDER
`
`13-CV-7851 (JMF)
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`---------------------------------------------------------------------- X
`
`
` :
`MICHAEL WARD, d/b/a BRAINTEASER
` :
`PUBLICATIONS,
` :
`
`
`
`
`
` :
` Plaintiff,
` :
` :
` :
` :
`
` :
`BARNES & NOBLE, INC., et al.,
` :
`
`
`
`
`
` :
` Defendants.
`
` :
`
`---------------------------------------------------------------------- X
`
`JESSE M. FURMAN, United States District Judge:
`
`
`
`-v-
`
`
`
`By Opinion and Order entered February 23, 2015, this Court denied in part and granted in
`
`part the motion for summary judgment of Defendants Barnes & Noble, Inc., Sterling Publishing
`
`Co., Inc. (“Sterling”), Francis Heaney, and Patrick Blindauer (collectively, “Defendants”) with
`
`respect to Plaintiff Michael Ward’s claims for copyright infringement and trade dress
`
`infringement (along with related state law claims). See Ward v. Barnes & Noble, Inc., No. 13-
`
`CV-7851 (JMF), — F. Supp. 3d —, 2015 WL 765833 (S.D.N.Y. Feb. 23, 2015) (“Ward I”).
`
`Plaintiff, in relevant part, alleged that Defendants — who, pursuant to a series of publishing
`
`agreements between the parties, published a “Scratch and Solve” series styled on the age-old
`
`game Hangman under Plaintiff’s name, and registered copyrights to the same in Plaintiff’s name
`
`— infringed Plaintiff’s U.S. copyrights and a New Zealand copyright through their publication
`
`of similar books under others’ names. The Court granted summary judgment with respect to
`
`Plaintiff’s claims that (1) Defendants infringed his New Zealand copyright and (2) illustrations
`
`and artwork published by Defendants infringed his U.S. copyrights, but denied summary
`
`judgment with respect to Plaintiff’s claim that instructions in the books published by Defendants
`
`03/30/2015
`
`

`
`Case 1:13-cv-07851-JMF Document 51 Filed 03/30/15 Page 2 of 8
`
`infringed his U.S. copyrights (the “Instructions Claim”). Defendants now move for partial
`
`reconsideration of the Court’s Opinion and Order, arguing that the Court should have also
`
`granted Defendants’ motion for summary judgment with respect to the Instructions Claim.
`
`(Docket No. 41). Upon careful consideration of the parties’ submissions and the summary
`
`judgment record, Defendants’ motion is DENIED.1
`
`Motions for reconsideration are governed by Rule 59(e) of the Federal Rules of Civil
`
`Procedure and Local Civil Rule 6.3, which are meant to “ensure the finality of decisions and to
`
`prevent the practice of a losing party examining a decision and then plugging the gaps of a lost
`
`motion with additional matters.” Medisim Ltd. v. BestMed LLC, No. 10-CV-2463 (SAS), 2012
`
`WL 1450420, at *1 (S.D.N.Y. Apr. 23, 2012) (internal quotation marks omitted). “A district
`
`court has broad discretion in determining whether to grant a motion [for reconsideration].”
`
`Baker v. Dorfman, 239 F.3d 415, 427 (2d Cir. 2000). Such a motion “is appropriate where ‘the
`
`moving party can point to controlling decisions or data that the court overlooked — matters, in
`
`other words, that might reasonably be expected to alter the conclusion reached by the court.’”
`
`Medisim, 2012 WL 1450420, at *1 (quoting In re BDC 56 LLC, 330 F.3d 111, 123 (2d Cir.
`
`2003)). “‘The major grounds justifying reconsideration are an intervening change in controlling
`
`law, the availability of new evidence, or the need to correct a clear error or prevent manifest
`
`injustice.’” Terra Sec. ASA Konkursbo v. Citigroup, Inc., 820 F. Supp. 2d 558, 560 (S.D.N.Y.
`
`2011) (quoting Virgin Atl. Airways, Ltd. v. Nat’l Mediation Bd., 956 F.2d 1245, 1255 (2d Cir.
`
`
`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.
`
`
`
`2
`
`

`
`Case 1:13-cv-07851-JMF Document 51 Filed 03/30/15 Page 3 of 8
`
`1992)). It is well established that the rules permitting motions for reconsideration must be
`
`“narrowly construed and strictly applied so as to avoid repetitive arguments on issues that have
`
`been considered fully by the [C]ourt.” United States v. Treacy, No. 08-CR-0366 (RLC), 2009
`
`WL 47496, at *1 (S.D.N.Y. Jan. 8, 2009) (internal quotation marks omitted).
`
`
`
`Applying those standards here, Defendants’ motion fails. Defendants argue first that
`
`reconsideration is warranted because the Court’s denial of summary judgment with respect to the
`
`Instructions Claim conflicts with its “own factual finding that it was Sterling that had created
`
`and contributed the[] instructions” in the “Scratch and Solve” series. (Mem. Law Supp. Defs.’
`
`Mot. Partial Reconsideration Court’s Feb. 23, 2015 Op. & Order (Docket No. 42) (“Defs.’
`
`Mem.”) 2; see also Defs.’ Reply Mem. Law Further Supp. Mot. Partial Reconsideration (Docket
`
`No. 50) (“Defs.’ Reply Mem.”) 1). But the Court made no such finding; instead, it found that the
`
`initial instructions, although first drafted by Sterling, were developed after a “back-and-forth”
`
`between Plaintiff and the publisher. (Ward I, 2015 WL 765833, at *3). And, as Defendants
`
`themselves admit, those instructions were later “edited” in ways that — as discussed below —
`
`resembled instructions that Plaintiff wrote for his New Zealand Book. (Defs.’ Mem. 3 n.1).
`
`Given that, and the plain language of the copyrights that Sterling itself registered — indicating
`
`that Plaintiff’s authorship covered the “text” or “entire text” of the books produced under the
`
`publishing agreement — the Court thus ruled that it could not conclude, as a matter of law, that
`
`Defendants did not infringe Plaintiff’s U.S. copyrights in the instructions. (Id. at *8; see Decl.
`
`Barry Janay Opp’n Defs.’ Mot. Summ. J. (Docket No. 32) (“Janay Decl.”), Ex. FF).
`
`None of Defendants’ arguments on their motion for reconsideration warrants a different
`
`conclusion now. The Copyright Act makes clear that “the certificate of a registration . . . shall
`
`constitute prima facie evidence of the validity of the copyright and of the facts stated in the
`
`
`
`3
`
`

`
`Case 1:13-cv-07851-JMF Document 51 Filed 03/30/15 Page 4 of 8
`
`certificate.” 17 U.S.C. § 410(c). As one of the “facts stated” on the certificates is that Plaintiff is
`
`to be considered the author of the “text” or “entire text” of the books published by Sterling —
`
`terms that necessarily include the book’s instructions — “the initial burden is on the defendant[s]
`
`to introduce evidence sufficient to overcome this presumptive validity.” Van Cleef & Arpels,
`
`Inc. v. Schechter, 308 F. Supp. 674, 676 (S.D.N.Y. 1969). The fact that Sterling provided an
`
`initial version of the “Scratch and Solve” instructions to Plaintiff (and Plaintiff voiced objections
`
`(see Decl. Louis S. Ederer Supp. Defs.’ Mot. Summ. J. (Docket No. 21) (“Ederer Decl”), Ex.
`
`13)) does not, by itself, establish authorship as a matter of law, as later versions of the books’
`
`instructions differed significantly from those first used in the “Scratch and Solve” series.
`
`Notably, those later instructions include language used in the instructions drafted by Plaintiff for
`
`his New Zealand Book. (Compare, e.g., Janay Decl., Ex. FF (instructions to Tough Hangman
`
`beginning with “It’s simple, easy, and fun”) with Ederer Decl., Ex. 9 (instructions to Plaintiff’s
`
`New Zealand book beginning with “It’s simple, easy and great fun”)).2
`
`The Second Circuit has held that “[a]uthorship is generally a question of fact for the
`
`jury.” Medforms, Inc. v. Healthcare Mgmt. Solutions, Inc., 290 F.3d 98, 110 (2d Cir. 2002).
`
`Given that, and the fact that Sterling itself registered copyrights that seem to belie the argument it
`
`now advances (see, e.g., Ederer Decl., Ex. 18 at 2 (noting, like previous agreements between
`
`Plaintiff and Sterling, that “Publisher . . . agrees to copyright any Work in Author’s name with
`
`the U.S. Copyright Office”), the Court could not, and cannot now, grant summary judgment on
`
`
`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).
`
`
`
`4
`
`

`
`Case 1:13-cv-07851-JMF Document 51 Filed 03/30/15 Page 5 of 8
`
`Plaintiff’s Instructions Claim. See Maurizio v. Goldsmith, 84 F. Supp. 2d 455, 466-67 (S.D.N.Y.
`
`2000) (“While [Plaintiff’s] ideas and suggestions are not copyrightable, language which she
`
`produced as a tangible form of expression (in the outline or draft chapters) and which was
`
`intended to and did indeed merge with Goldsmith’s work in FWC may be copyrightable. . . .
`
`[T]he question of whether the language was independently created by [Plaintiff] is disputed, and
`
`thus one for the trier of fact.”), aff’d, 230 F.3d 518 (2d Cir. 2000); see also Ward I, 2015 WL
`
`765833, at *8 (noting that “the wording of instructions for the playing of a game is itself
`
`copyrightable so as to prevent a literal or closely paraphrased copying” (internal quotation marks
`
`omitted)).3
`
`Defendants also contend that reconsideration is warranted because one paragraph in
`
`Plaintiff’s original, improperly filed Rule 56.1 statement describes the “content for which
`
`Plaintiff had a United States copyright” as “the text or words that comprised the solutions to the
`
`various hangman puzzles.” (Docket No. 28, ¶ 33 (emphasis added); see Defs.’ Mem. 3-4; Defs.’
`
`Reply Mem. 5). This argument is unavailing for two reasons. First, on their motion for
`
`summary judgment, Defendants argued only that this statement supported their argument that the
`
`copyright did not extend to the illustrations in the various books, not that it also established that
`
`the copyright did not extend to the books’ instructions. (Compare Defs.’ Reply Mem. Law
`
`
`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.”).
`
`
`
`
`
`5
`
`

`
`Case 1:13-cv-07851-JMF Document 51 Filed 03/30/15 Page 6 of 8
`
`Further Supp. Mot. Summ. J. (Docket No. 35) (“Defs.’ Reply Summ. J. Mem.”) 5, with id. at 6
`
`n.11). Defendants’ new argument that this statement should also be considered a concession that
`
`the instructions are not part of the “text” or “entire text” in which Plaintiff owned copyrights —
`
`despite the plain language of the copyright registrations indicating otherwise — is therefore not a
`
`proper ground for seeking reconsideration of the Court’s prior order. See Gonzalez-Blanco v.
`
`Bank of Am., N.A., No. 11-CV-7139 (TPG), 2012 WL 19383, at *1 (S.D.N.Y. Jan. 3, 2012) (“A
`
`motion for reconsideration should be denied where the party seeking consideration merely raises
`
`new arguments and issues it could have raised on the underlying motion.”); accord Weiss v. El Al
`
`Israel Airlines, Ltd., 471 F. Supp. 2d 356, 359 (S.D.N.Y. 2006).
`
`Second, and in any event, Defendants still must overcome the presumption of authorship
`
`established by the copyright registrations Sterling filed. See Van Cleef & Arpels, 308 F. Supp. at
`
`676. One sentence in an improperly filed Rule 56.1 statement (that Defendants themselves
`
`fought vehemently to exclude and that the Court ordered Plaintiff to re-file), on a point that
`
`Plaintiff in fact disputes in his operative Rule 56.1 Statement, is not enough to defeat that
`
`presumption. See Huurman v. Foster, No. 07-CV-9326 (MHD), 2010 WL 2545865, at *11
`
`(S.D.N.Y. June 21, 2010) (“A party can rebut the presumption of validity by providing evidence
`
`of a material issue of fact concerning the copyright. If the presumption of validity is overcome,
`
`the burden of proof shifts back to the party claiming the copyright to prove that it has original
`
`and copyrightable subject matter and owns the same.” (internal citation and quotation marks
`
`omitted)). (Docket Nos. 30-31; compare Docket No. 28, ¶ 33 with Docket No. 33, ¶ 27 (denying
`
`that Plaintiff’s U.S. Copyright covered “the ‘text’, or words, that comprised the solutions to the
`
`various Hangman puzzles”). And while the Court did reference Plaintiff’s statement in rejecting
`
`his argument that his registered copyrights covered the interior artwork and illustrations of the
`
`
`
`6
`
`

`
`Case 1:13-cv-07851-JMF Document 51 Filed 03/30/15 Page 7 of 8
`
`“Scratch and Solve” series, Ward I, 2015 WL 765833, at *7, the statement was not essential to
`
`the Court’s conclusion. Instead, the Court rejected Plaintiff’s U.S. copyright claim based on the
`
`“Scratch and Solve” illustrations principally because the plain language of the copyright
`
`registrations indicated that his authorship extended only as far as the “text” — the same reason
`
`the Court could not grant summary judgment on Plaintiff’s Instructions Claim. See id. at *7-8.
`
`
`
`Plaintiff’s claim of infringement with respect to the instructions is far from
`
`overwhelming, as there is certainly evidence in the record (including, perhaps, Plaintiff’s initial
`
`Rule 56.1 Statement — the admissibility of which the Court need not address here) from which a
`
`reasonable jury could conclude that Sterling was the author. But given — among other things —
`
`Sterling’s own statements in the copyright registrations and the similarities between the
`
`instructions at issue here and in instructions in Plaintiff’s New Zealand book, the issue of
`
`authorship is one for the jury to decide at trial, not for this Court to decide on summary
`
`judgment. See Medforms, 290 F.3d at 110; see also Maurizio, 84 F. Supp. 2d at 467 (“[T]he
`
`question of whether the language was independently created by [Plaintiff] is disputed, and thus
`
`one for the trier of fact.”); Sutton Imp.-Exp. Corp. v. Starcrest of Calif., 762 F. Supp. 68, 70
`
`(S.D.N.Y. 1991) (“Authorship is . . . an issue of fact precluding summary judg[]ment.”); Morita
`
`v. Omni Publications Int’l, Ltd., 741 F. Supp. 1107, 1112-13 (S.D.N.Y. 1990) (denying summary
`
`judgment because, among other things, the parties raised “genuine issues of material fact with
`
`respect to Morita’s and Kan’s relative contributions to the project” that was the subject of the
`
`copyright infringement claim), vacated by consent judgment, 760 F. Supp. 45 (S.D.N.Y. 1991).
`
`Notably, the case Defendants rely on most heavily in their reply memorandum (Defs.’ Reply
`
`Mem. 7-8) — Defendants insist that Plaintiff’s claim should be dismissed because he, like the
`
`plaintiff in that case, did not author the disputed work — was decided after a bench trial, not on a
`
`
`
`7
`
`

`
`Case 1:13-cv-07851-JMF Document 51 Filed 03/30/15 Page 8 of 8
`
`motion for summary judgment. See Richard J. Zitz, Inc. v. Pereira, No. 99-9399, 225 F.3d 646,
`
`2000 WL 1239830, at *3, 5 (2d Cir. Aug, 31, 2000) (summary order); see also N. Forest Dev.,
`
`LLC v. Walden Ave. Realty Assoc., LLC, No. 06-CV-378 (JJM) (RJA), 2009 WL 5959961, at *3
`
`(W.D.N.Y. July 22, 2009) (“Zitz was decided following a bench trial, not on a motion for
`
`summary judgment. Based on the record before [the Court], [it] cannot determine as a matter of
`
`law whether North Forest is or is not the author of the copyrighted drawings.”).
`
`For the foregoing reasons, Defendants’ motion for reconsideration is DENIED. Pursuant
`
`to the Court’s Order of March 4, 2015 (Docket No. 44), the parties’ Joint Pretrial Order and
`
`related materials — the substance of which are outlined in the Court’s summary judgment
`
`opinion, see Ward I, 2015 WL 765833, at *11, and the Court’s Individual Rules and Practices —
`
`are due twenty-one days from the date of this Memorandum Opinion & Order. Unless the Court
`
`orders otherwise for good cause shown, the parties shall be ready for trial two weeks thereafter.
`
`And finally, if the parties are interested in a referral to Magistrate Judge Maas for settlement
`
`purposes, they shall so advise the Court by joint letter as soon as possible.
`
`The Clerk of Court is directed to terminate Docket No. 41.
`
`SO ORDERED.
`
`
`
`Date: March 30, 2015
`New York, New York
`
`
`
`8